- 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 · Mar 30, 2023 · DER2017-00031 · APJ Jameson Lee · DER · Final written decision
Petitioner failed to prove that any of Respondent’s claims 24–36 was derived from Petitioner’s inventor because Respondent proved earlier conception of the disclosed subject matter.
RulingsFinal written decision- BurdenNot shown unpatentable
“Conclusion As explained above, Petitioner’s proven time of conception and communication of the subject matter of “the invention disclosed to the respondent” is “February 14, 2014 4:04:17 PM EST.” Respondent’s proven time of conception of the subject matter of “the invention disclosed to the respondent” is “Feb 14, 2014 12:55 pm.” If Respondent’s time is Eastern Standard Time, then Respondent’s conception precedes Petitioner’s conception and communication by 3 hours and 9 minutes. If Respondent’s time is Pacific Standard Time, it precedes Petitioner’s conception and communication by 9 minutes. Accordingly, Petitioner has not shown that Bradley Burnam conceived of “the invention disclosed to the respondent” prior to Marc Selner’s conception of that same subject matter, and Petitioner has not shown that Bradley Burnam communicated “the invention disclosed to the respondent” to Marc Selner prior to Marc Selner’s conception of the same subject matter. As a result, Petitioner has not proven, by a preponderance of the evidence, that any one of claims 24–36 of Respondent’s Application 15/549,111 is derived from Bradley Burnam. J.” slip op. at 51
- ExcludeNot reached
“We need not decide Respondent’s Motion to Exclude because, even considering all of the evidence Respondent seeks to exclude, Petitioner still does not prevail. Further, Respondent’s reasons for excluding Exhibit 1107 do not address admissibility, but rather implicate the proper weight to give to Marc Selner’s cross-examination testimony. See, e.g, Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (Final Written Decision) (“[T]he Board, sitting as a non-jury tribunal . . . is well-positioned to determine and assign appropriate weight to the evidence presented.”). Accordingly, Respondent’s Motion to Exclude is dismissed as moot.” slip op. at 52
- Expert testimonyOther
“testimony. There also is no indication that Brad Meeuwsen possessed or considered all of the evidence that is now before us, in particular Exhibits 2067, 2067A, and 2041. Further, inventorship is a legal question. Univ. of Colorado Found. Inc. v. American Cyanamid Co., 342 F.3d 1298, 1304 (Fed. Cir. 2003). Although Brad Meeuwsen as a fact witness may testify to what he heard or received from Bradley Burnam or Marc Selner, and such testimony would be probative, any testimony from Brad Meeuwsen with regard to the ultimate conclusion of inventorship carries no weight.” slip op. at 44
None - PTAB · Jan 8, 2018 · IPR2017-01692 · APJ Jameson Lee · IPR · Order
The Board granted the parties’ joint motion to terminate the proceedings before institution and granted both requests to keep the settlement agreements confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under the circumstances, we grant the parties’ Motion to Terminate, Motion to File the Settlement Agreement as Confidential, and Motion to File the Final Settlement Agreement as Confidential in each proceeding. These proceedings are in their early stages: a decision on institution has not issued,” slip op. at 2
NonePatents in suitUS 6,138,147 - PTAB · Mar 8, 2016 · IPR2014-01441 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, but denied entry of substitute claims 70–84 for inadequate written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“(1) cancellation of challenged claims 48, 50–53, and 60–69 of the ’681 patent and (2) entry of substitute claims 70–84. Mot. 1, 25; see supra Section I.D. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. Nike, 2016 WL 537609, at *3–*5 (“[T]he Board did not err by placing the burden on [Patent Owner] to establish patentability over the prior art of [Patent Owner]’s proposed substitute claims.”); see Idle Free, Case IPR2012-00027, slip op. at 7–8 (Paper 26).” slip op. at 31
- ScopeDecided for patent owner
“A patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability. A proper substitute claim under 37 C.F.R. § 42.121(a)(2)(i) must only narrow the scope of the challenged claim it replaces. Similarly, under 37 C.F.R. § 42.121(a)(2)(ii), a substitute claim may not enlarge the scope of the challenged claim it replaces by eliminating any feature. Idle Free, Case IPR2012-00027, slip op. at 5 (Paper 26). As noted above, in its Motion to Amend, Patent Owner proposes independent claim 70 as a substitute for independent claim 48, independent claim 75 as a substitute for independent claim 60, and independent claim 80 as a substitute for claim 65. Mot. 2–7. Each substitute claim includes all of the limitations of the corresponding challenged claim, for which it is a substitute, and only adds additional limitations. No limitations are removed. In its Opposition, Petitioner does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the cancelled, challenged claims of the ’681 patent. Opp. 1, 11. The substitute dependent claims are similarly narrowed by the limitations added to the independent claims, from which they depend. Consequently, the proposed substitute claims do not enlarge the scope of the challenged claims.” slip op. at 33
- 112 supportDenied
“partes review must 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.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“strongest evidence for construing the term “optical gain” comes from the Specification itself, which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citations omitted) (internal quotation marks omitted; emphasis added); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification). Given the plain language of the claims, in particular the emphasis on “optical”; the testimony of the parties’ declarants, and the clear definition of the Specification, we are not persuaded here by Patent Owner’s argument that all disclosed embodiments should be embraced by our construction. “It is not necessary that each claim read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Broadcom Corp.” slip op. at 27
Claim constructioncites Phillips - PTAB · Mar 8, 2016 · IPR2014-01442 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, and denied entry of substitute claims 70–84 for insufficient written-description support.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“partes review must 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.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
Nonecites Phillips - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - PTAB · Mar 6, 2015 · IPR2014-00439 · APJ Matthew R Clements · IPR · Order
The Board granted the parties’ revised joint motion and terminated the proceeding as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“and that, even if the parties agree to settle any issue in a proceeding, the Board may independently determine any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects 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). We have not yet decided the merits of this proceeding. For example, the oral argument has not been held. The Board is persuaded that, under these circumstances, it is appropriate to terminate this proceeding as to both Petitioner and Patent Owner without rendering a final written decision. 37 C.F.R. § 42.72. ORDER Accordingly, it is: ORDERED that the revised joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated as to both Petitioner and Patent Owner; and” slip op. at 3
NonePatents in suitUS 7,365,871 - 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 · Nov 19, 2014 · IPR2014-00300 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motions 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)InstitutedOther
“Petitioner filed a Petition on December 26, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 9, 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
NonePatents in suitUS 7,254,621
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.