- PTAB · Oct 6, 2026 · IPR2025-00530 · APJ Scott C Moore · IPR · Final written decision
Original claims 1–9 were canceled; the non-contingent motion to add substitute claims 10–18 was denied for lack of written-description support, and claim 18 was also indefinite.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“that either the ’303 application or the ’838 provisional contain adequate written description support for the disputed feature of limitation [10.d]. Though the disclosures cited by Patent Owner indicate that a secondary identifier can be used to aid in verification of a UAV, these disclosures also make clear that both first and second identifiers are transmitted by and received from the UAV. See, e.g., Ex. 2002, 4:15–17, 30:24–31:6; Ex. 2003 ¶¶ 14, 66. Patent Owner’s reliance on disclosure characterized as transmitting an identifier from a remote computing system “through the UAV” (Reply 2) is not persuasive. The cited disclosures from the ’303 application and ’838 provisional generally disclose that the identifiers transmitted by a UAV can be “generated remotely,” such as by a “remote computing system.” Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45. But Patent Owner has not identified disclosure indicating that a remote computing system may transmit an identifier to the identification receiver. In the ’303 application and ’838 provisional, only the UAV (which is part of the discrimination system, and thus not “remote”) actually transmits identifiers to the identification receiver. Patent Owner is correct in its assertion that an “aerial system identifier can be generated on-board the aerial system” or “generated remotely . . . at a remote computing system.” Mot. 7 (citing Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45). But even if a UAV’s identifier was at some time in the past generated by a remote computing system, the subsequent transmission of that identifier from the UAV to the identification receiver would not satisfy the plain language of limitation [10.d]. The claim language “receive … a second identifier from a computing system that is remote to the discrimination system” requires the receipt of a transmission of the second identifier from a remote computing system. This claim language limits the source of the received transmission (i.e., where the particular transmission is “receive[d] … from”). Thus, the relevant issue is from where was the recited second identifier received. The relevant is not where the second identifier was originally generated.” slip op. at 12
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“We determine that the disputed language in limitation [10.d] is not indefinite. There is no recitation in proposed substitute claim 10 that the second identifier is transmitted solely from the identifier transmission system. Thus, the alleged irreconcilable contradiction cited by Petitioner is not recited in the claims. Petitioner’s position appears to rest on the fact that the ’303 application and ’838 provisional do not disclose receiving the second identifier from a remote computing system. See Sur-reply 6 (“To manufacture written description support, [Patent Owner] argues the claim encompasses identifiers routed ‘through the UAV.’”). Though we agree that limitation [10.d] lacks adequate written description support, this defect does not render the claim indefinite because the scope of limitation [10.d] is otherwise reasonably certain based on its plain language. See supra § III.C.4.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date, deniedDecided for patent owner
“In contrast, the ’393 provisional never discloses that the described drone defense system may use the identity of a detected drone to develop a particular countermeasure. The disclosed RTSS certainly uses identity information to determine whether a drone is a threat. And if a threat is identified, the RTSS immediately starts “a series of processes … to determine what rule of engagement will be applied on the intruding drone.” Ex. 1006 ¶ 10. The ’393 provisional discloses that the system may select a particular countermeasure based on (i) the particular zone within a protected area within which a drone is located, (ii) “the behavior of the hostile drone,” or (iii) “other instructions.” Id. ¶¶ 9, 10. But the ’393 provisional never discloses that these “other instructions” may include the identity of the drone. The system disclosed in the ’393 provisional uses the identity of a drone to determine whether to activate the countermeasure system. See id. ¶¶ 16–18. But there is no disclosure in the ’393 provisional that the countermeasure system, once activated, uses the identity of the drone to develop the particular countermeasure to be employed. See generally Ex. 1006. Thus, though the Whitmarsh reference itself contains ample written description support for limitation [19e], the earlier-filed ’393 provisional does not. On this record, and having reviewed the ’393 provisional in its entirety, we determine that the ’393 provisional does not “reasonably convey[] to those skilled in the art that the inventor had possession of” the subject matter of limitation [19e] of Whitmarsh’s claim 19 “as of the filing date” of the ’393 provisional. See Ariad, 598 F.3d at 1351.” slip op. at 27
§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 10,249,199 - PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision
Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15
- ScopeDecided for patent owner
“not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,713,959 - 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 · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision
The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,906 - 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 · Oct 28, 2014 · IPR2014-00062 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motion and terminated IPR2014-00062 as to all parties after settlement, before deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“reviews, after the parties have settled their disputes, would be contrary to public policy and would discourage future settlements by removing a significant motivation for settlement. Mot. 5. In view of the circumstances, we agree. Indeed, there are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 7,802,310 - PTAB · Oct 28, 2014 · IPR2014-00058 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the Rackspace inter partes reviews as to all parties, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Hosting, Inc. (collectively, “Rackspace”) and Patent Owner PersonalWeb Technologies, LLC and Level 3 Communications (collectively, PersonalWeb) filed a Joint Motion to Terminate in each of the above-identified inter partes reviews (“the Rackspace inter partes reviews”). Paper 34, “Mot.”2 The parties also filed a true copy of their Written Settlement Agreement, made in connection with the termination of the Rackspace inter partes reviews, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1014. Additionally, the parties submitted a Joint Request to have their Written Settlement Agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 33. For the reasons set forth below, the Joint Motions to Terminate and the Requests to have their Written Settlement Agreement treated as confidential business information are granted.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“court proceedings involving PersonalWeb and third parties. Mot. 6–7. However, except for EMC Corporation and VMWare, Inc. (collectively “EMC”) and Apple, Inc. (“Apple”), none of the third parties elected to file a Petition for inter partes review within the one-year statutory period under 35 U.S.C. § 315(b). Id. at 7. We note that the termination of the Rackspace inter partes reviews would not affect the inter partes reviews that involve EMC and Apple. We are cognizant that Google, Inc. and YouTube, LLC (collectively “Google”) filed four Petitions—IPR2014-00977, IPR2014- 00978, IPR2014-00979, and IPR2014-00980—and Motions for Joinder with four of the Rackspace inter partes reviews. See, e.g., IPR2014-00977, Paper 3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 3
NonePatents in suitUS 8,099,420 - 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 · Feb 25, 2014 · IPR2013-00016 · APJ Joni Y Chang · IPR · Final written decision
Claims 6, 7, 15, 17, and 18 were cancelled, and the motion to amend with substitute claims 19–23 was denied because MobileMedia did not establish the requirements for amendment or show patentability.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). A motion to amend claims in an inter partes review is not, itself, an amendment. As the moving party, MobileMedia bears the burden of proof to establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). In sum, MobileMedia’s proposed substitute claims are not entered automatically, but only upon MobileMedia having demonstrated the patentability of the substitute claims.” slip op. at 5
- ScopeDenied
“statutory considerations under 35 U.S.C. § 316(b)—“the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted”—the Office promulgated 37 C.F.R. § 42.121 to set forth the standards and procedures for allowing a patent owner, in an inter partes review, to move to amend the patent “to cancel a challenged claim or propose a reasonable number of substitute claims.” As set forth in 37 C.F.R. § 42.121(a)(2), a motion to amend may be denied where the amendment does not respond to a ground of unpatentability involved in the trial.” slip op. at 15
- 112 supportDenied
“It is well settled that a limitation that uses the term “means for” creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04 (Fed. Cir. 1998). “This presumption can be rebutted where the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375-76 (Fed. Cir. 2003). Therefore, in order to take the “means for determining a direction” limitation outside the bounds of § 112, ¶ 6, the claim must recite sufficient structure for performing the recited function. See Personalized Media, 161 F.3d at 704 (“In deciding whether [the] presumption has been rebutted, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6.”).” slip op. at 13
- Skill levelSkill level board ownOther
“Additionally, Dr. Madisetti does not proffer any evidence as to the level of ordinary skill in the art at the time of the invention, which is a necessary factual inquiry for determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18. In fact, Dr. Madisetti’s testimony does not address the level of ordinary skill in the art at the time of the invention and what was known previously regarding a recognition sensor that provides a detection signal or other claim features added in the substitute claims. At least some explanations should have been provided as to why a person with ordinary skill in the art, applying his own knowledge and creativity, would not have found the substitute claims obvious. In sum, limiting the discussion to the references cited in the petition is insufficient to demonstrate patentability of the substitute claims over the prior art in general. Without having discussed the level of ordinary skill in the art, and what was known previously regarding the features added in the substitute claims, MobileMedia’s motion fails to demonstrate the patentability of the substitute claims.” slip op. at 23
Nonecites GrahamPatents in suitUS 6,441,828 - 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.