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10 Institution Decision: Trial Instituted Document

Document IPR2016-01224, No. 10 Institution Decision - Trial Instituted Document (P.T.A.B. Dec. 15, 2016)
Specifically, the applicant explained that “[a]ll of the claims presented in this preliminary amendment generally require that the ADGPD send a response signal that allows a PC to automatically and
As readily apparent to one of ordinary skill in the relevant art, such UNIX based systems affirmatively require user intervention in order to operate and use the scanner disclosed in [Murata].
Patent Owner responds that “Petitioners fail to raise any new issue with Murata that was not previously considered, and discarded, by the USPTO [during examination of the ’073 application.
C. 35 U.S.C. § 325(d) The Board may reject a Petition requesting institution of inter partes review because “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); 37 C.F.R. § 42.3(a).
Under the facts and circumstances presented here, we decline to institute an inter partes review based on either ground asserted in the Petition, both of which rely primarily on Murata.
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9 Institution Decision: Trial Instituted Document

Document IPR2016-01222, No. 9 Institution Decision - Trial Instituted Document (P.T.A.B. Dec. 15, 2016)
As readily apparent to one of ordinary skill in the relevant art, such UNIX based systems affirmatively require user intervention in order to operate and use the scanner disclosed in [Murata].
The applicant explained that “additional limitations have been added into all of the new claims to further clarify the differences between them and the prior art,” including “the multi-use automatic processor feature has been clarified.” Id. at 25.
Patent Owner concludes that the prosecution history does not support Petitioner’s allegations that the change to “end user” was done specifically to overcome the prior art references listed above.
Under the facts and circumstances presented here, we decline to institute inter partes review based on any ground asserted in the Petition, all of which rely primarily on Murata.
Specifically, Petitioner argues that Murata discloses the limitation “without requiring any end user to interact with the computer to set up a file system in the ADGPD at any time.” Pet. 21–22; see also Pet. 11–12, 29–36.
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9 Institution Decision: Trial Instituted Document

Document IPR2016-01200, No. 9 Institution Decision - Trial Instituted Document (P.T.A.B. Dec. 15, 2016)
Patent 8,504,746 B2 Reference(s) Aytac,1 SCSI Specification,2 and Admitted Prior Art3 Basis § 103 Claim 1, 6, 15, 17, 18, 31, 34 In addition to the supporting argument for these grounds in the Petition, Petitioner also presents expert testimony.
For these claim limitations, the parties agree to adopt the construction proposed by Patent Owner in the related District Court proceeding— “without requiring the end user to install or load specific drivers or software
Patent owner alleges that the claim term “end user” should not be limited to “actual end user,” but instead should include a “system administrator” who sets up a computer for another or “a technically competent individual who understood how to install device drivers.” Prelim. Resp. 23–25.
Notwithstanding the apparent differing opinions, at this juncture, the variance between the proffered levels of ordinary skill in the art does not have meaningful impact in our determination of whether to institute inter partes review.
Having found sufficient support for Petitioner’s contentions and having been unpersuaded, on the present record, by any of Patent Owner’s arguments, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1, 6, 15, 17, 18, 31, and 34 are unpatentable over Aytac, the Admitted Prior Art, and the SCSI Specification.
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8 Institution Decision: Trial Instituted Document

Document IPR2016-01200, No. 8 Institution Decision - Trial Instituted Document (P.T.A.B. Dec. 15, 2016)
Patent 8,504,746 B2 Reference(s) Aytac,1 SCSI Specification,2 and Admitted Prior Art3 Basis § 103 Claim 1, 6, 15, 17, 18, 31, 34 In addition to the supporting argument for these grounds in the Petition, Petitioner also presents expert testimony.
For these claim limitations, the parties agree to adopt the construction proposed by Patent Owner in the related District Court proceeding— “without requiring the end user to install or load specific drivers or software
Patent owner alleges that the claim term “end user” should not be limited to “actual end user,” but instead should include a “system administrator” who sets up a computer for another or “a technically competent individual who understood how to install device drivers.” Prelim. Resp. 23–25.
Notwithstanding the apparent differing opinions, at this juncture, the variance between the proffered levels of ordinary skill in the art does not have meaningful impact in our determination of whether to institute inter partes review.
Having found sufficient support for Petitioner’s contentions and having been unpersuaded, on the present record, by any of Patent Owner’s arguments, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1, 6, 15, 17, 18, 31, and 34 are unpatentable over Aytac, the Admitted Prior Art, and the SCSI Specification.
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10 Order: Scheduling Order

Document IPR2016-01200, No. 10 Order - Scheduling Order (P.T.A.B. Dec. 15, 2016)
A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.
The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
Although the filing of a Motion to Amend is authorized under the trial Rules, Patent Owner must confer with the Board, preferreably no less than ten business days prior to DUE DATE 1, before filing any Motion to Amend.
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12 Decision Granting Institution: Decision Granting Institution of Inter Partes Revie...

Document IPR2016-01216, No. 12 Decision Granting Institution - Decision Granting Institution of Inter Partes Review (P.T.A.B. Dec. 15, 2016)

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13 Order: Scheduling Order

Document IPR2016-01216, No. 13 Order - Scheduling Order (P.T.A.B. Dec. 15, 2016)

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13 Order: Scheduling Order

Document IPR2016-01214, No. 13 Order - Scheduling Order (P.T.A.B. Dec. 15, 2016)

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12 Decision Granting Institution: Decision Granting Institution of Inter Partes Revie...

Document IPR2016-01214, No. 12 Decision Granting Institution - Decision Granting Institution of Inter Partes Review (P.T.A.B. Dec. 15, 2016)

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SINGLE-GAP SHOCK-STOP STRUCTURE AND METHODS OF MANUFACTURE FO...

Docket 15/333,347, U.S. Patent Application (Oct. 25, 2016)

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CLEARVIEW

Docket 86780341, Trademark (Oct. 7, 2015)

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TIMESHARK

Docket 86780337, Trademark (Oct. 7, 2015)

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No. 17

Document Crambo, S.A. v. Panasonic Corporation, 91214205, No. 17 (T.T.A.B. May. 19, 2015)

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15 Institution Decision: Trial Instituted Document

Document IPR2016-01202, No. 15 Institution Decision - Trial Instituted Document (P.T.A.B. Dec. 15, 2016)

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12 Order: Scheduling Order

Document IPR2016-01211, No. 12 Order - Scheduling Order (P.T.A.B. Dec. 15, 2016)

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