- 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 · Oct 7, 2022 · IPR2021-00680 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7, 9–11, 14–16, 19, 21, 32–37, 39, 47, and 49–57 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
Nonecites KSR · GrahamPatents in suitUS 10,469,934 - PTAB · Dec 6, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision
Claims 8–10 are unpatentable based on the instituted obviousness grounds after the Board reconsidered the record on rehearing.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“be heard regarding the allegedly new circuits set forth in specific paragraphs of the Baker Reply Declaration. No more was required. Accordingly, Patent Owner’s Motion is denied. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“With no Board denial of concrete, focused requests before us, we are not prepared to find that [the appellant] was denied a meaningful opportunity to respond.”)24; Opp. 15 (“Patent” slip op. at 68
- RehearingOther
“Subsequently, Patent Owner filed a Request for Rehearing. Paper 41 (“Rehearing Request” or “Reh’g Req.”). Based on the Rehearing Request, the Board withdrew the First Final Written Decision as set forth in the Decision on Rehearing. Paper 42 (Withdrawal of Final Written Decision and Authorization of Sur-Reply) (“Rehearing Decision” or “Reh’g Dec.”). As set forth in the Rehearing Decision, we granted Patent Owner’s request for additional briefing in the form of a Sur-Reply (Paper 43). See Reh’g Dec. 5–6; Sur-Reply.” slip op. at 2
NonePatents in suitUS 6,169,503 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - PTAB · Sep 23, 2014 · IPR2014-01007 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated each proceeding as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,635,583 - PTAB · Sep 23, 2014 · IPR2014-01001 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions to terminate all four proceedings and terminated each as to both parties, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“with respect to both Petitioner and Patent Owner. Id. at 2–4. The parties submit that termination is appropriate because each “proceeding is in its infancy.” Id. at 4. Issues raised during the trial have not been briefed fully and the Board has not yet decided the merits of each proceeding. Id. Petitioner indicates that it will no longer participate even if the Board does not terminate the respective proceeding. Id. According to the parties, Congress and federal courts have expressed a strong interest in encouraging settlement in litigation. Id. at 3. In exercising our independent determination, we generally expect that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,258,547 - PTAB · Sep 23, 2014 · IPR2014-00999 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated all four proceedings as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties urge the Board to terminate each of these instant proceedings with respect to both Petitioner and Patent Owner. Id. at 2–4. The parties submit that termination is appropriate because each “proceeding is in its infancy.” Id. at 4. Issues raised during the trial have not been briefed fully and the Board has not yet decided the merits of each proceeding. Id. Petitioner indicates that it will no longer participate even if the Board does not terminate the respective proceeding. Id. According to the parties, Congress and federal courts have expressed a strong interest in encouraging settlement in litigation. Id. at 3. In exercising our independent determination, we generally expect that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,264,049 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00268 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motion, terminated IPR2014-00268 without a final written decision, and ordered the settlement agreement treated as business confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“termination of the proceeding and that termination is proper because the proceeding is at a preliminary stage. See Paper 26. As the motion notes, we instituted trial on May 19, 2014. Id.; Paper 17. At this preliminary stage in the proceeding, the record lacks full briefing on the trial issues.” slip op. at 2
NonePatents in suitUS 7,921,139 - PTAB · Aug 18, 2014 · IPR2014-00841 · APJ Justin T Arbes · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute inter partes review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On August 14, 2014, the parties filed a joint motion (Paper 10) to terminate the instant proceeding on the basis of a settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 1012) and requested in the joint motion that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The instant proceeding is still in the preliminary stages. Patent Owner has not yet filed a preliminary response and we have not yet determined whether to institute an inter partes review. The parties further represent that they have agreed to dismissal with prejudice of the pending district court case between the parties involving U.S. Patent No. 7,729,530 B2 (“the ’530 patent”). See Paper 10 at 2 (citing Ex. 1012). Although the parties identify a number of other pending district court cases where the ’530 patent is being asserted against other defendants, see Paper 4 at 2–3; Paper 8 at 1–2, given the status of this proceeding and the parties’ agreement, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,729,530
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.