REALIZE THE SIGNIFIGANCE
ZPaul posted this morning about Wi-Fi One LLC seeking another Appeal and how the Federal Circuit court is asking the PTAB for input. I'm adding below some additional information showing the January 9,2018 initial Wi-Fi One decision as well as PTAB information regarding SFOR patents. It shows that the PTAB ruled that Wi-Fi One's patent claims were actually unpatentable while holding the opposite for SFOR. So when the Federal Appeals court yesterday asked the PTAB to weigh in on the Wi-Fi One LLC case they might very well be in trouble. What about SFOR? Note below that we will be golden:
Fed. Circ. Asks USPTO If Wi-Fi One Deserves 2nd Rehearing
By Tiffany Hu
Law360 (June 7, 2018, 8:36 PM EDT) -- The Federal Circuit asked the U.S. Patent and Trademark Office on Thursday whether it should give Wi-Fi One LLC another chance in front of the full Federal Circuit, as it tries to salvage its messaging patents after winning a ruling earlier this year that opened the door for more appeals of Patent Trial and Appeal Board decisions.
The appeals court said it was allowing both the USPTO’s new director, Andrei Iancu, and Broadcom Corp. to weigh in on whether it should grant Wi-Fi One’s petition in.
January 09, 2018
Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) (en banc)
Quote: 'The (PTAB) Board denied Wi-Fi One the opportunity to take discovery regarding the relationship of the parties, and the Federal Circuit denied a petition for a writ of mandamus. Ultimately, the (PTAB) Board instituted the IPRs, and issued Final Written Decisions finding the challenged claims unpatentable'.
What about SFOR patents after PTAB review:
DECISION - October 17, 2017
Denying Institution of Inter Partes Review 37 C.F.R. § 42.108
Duo Security Inc., Centrify Corporation, and Trustwave Holdings, Inc. (collectively, “Petitioner”) filed a Petition requesting inter partes review of claims 1–17, 19–24, 53, and 54 of U.S. Patent No. 8,484,698 B2 (Ex. 1001, “’698 patent”). Paper 2 (“Pet.”). StrikeForce Technologies, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’698 patent. Thus, for the reasons given below, we deny institution of an inter partes review.
III. CONCLUSION
In conclusion, for the reasons given, we determine that the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that the challenged claims of the ’698 patent, claims 1–17, 19–24, 53, and 54, are unpatentable. Thus, we do not institute inter partes review of any of the challenged claims on any of the asserted grounds. IV. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), the Petition is denied, and no trial is instituted as to any claim of U.S. Patent No. 8,484,698 B2.
Also notice this excerpt from Ropes & Gray March 26, 2018 Appeal Response:
In the IPR proceedings, the Petitioners were forced to combine at least three different references to try to cobble together a system that approximates the structure and functionality of the Asserted Claims. Even then, and under the PTAB’s “preponderance of the evidence” standard, the petitioners still could not demonstrate that there was a reasonable likelihood that their complicated combinations mirror the unique and novel architecture of the Asserted Patents and invalidate the challenged claims. As was apparent to the PTAB, the ordered combination of elements in the Asserted Claims is not so “conventional” as the district court assumed. The reexamination proceedings for the ’599 Patent also confirm that the Asserted Patents embody an inventive concept. During those proceedings, the Examiner found all claims patentable and allowed seven new claims, concluding that “the prior art cited by the Requesters fails to teach or suggest” all the limitations of the ’599 Patent claims.
CONCLUSION
WHEREFORE, for the foregoing reasons, StrikeForce respectfully requests that this Court reverse the decision dismissing StrikeForce’s Complaint with prejudice find that the Asserted Claims are in fact patent-eligible under 35 U.S.C. § 101; and remand for trial. At the very least, this Court should vacate the district court’s ruling and remand for further factual findings as to whether the claimed combination of elements was well-understood, routine, and conventional.
Case: 18-1470 Document: 17 Page: 69 Filed: 03/26/2018
Respectfully submitted,
Douglas H. Hallward-DriemeierDouglas
With the Supreme Court saying that the PTAB has the Constitutional right to determine patentability we need to just take our millions of shares (if we have them) and hold them tight!!
Why would the Federal Appeals court even send this down to rule on it when the District court failed to provide ONE precendent for their Alice 35/101 ruling?
ZPaul posted this morning about Wi-Fi One LLC seeking another Appeal and how the Federal Circuit court is asking the PTAB for input. I'm adding below some additional information showing the January 9,2018 initial Wi-Fi One decision as well as PTAB information regarding SFOR patents. It shows that the PTAB ruled that Wi-Fi One's patent claims were actually unpatentable while holding the opposite for SFOR. So when the Federal Appeals court yesterday asked the PTAB to weigh in on the Wi-Fi One LLC case they might very well be in trouble. What about SFOR? Note below that we will be golden:
Fed. Circ. Asks USPTO If Wi-Fi One Deserves 2nd Rehearing
By Tiffany Hu
Law360 (June 7, 2018, 8:36 PM EDT) -- The Federal Circuit asked the U.S. Patent and Trademark Office on Thursday whether it should give Wi-Fi One LLC another chance in front of the full Federal Circuit, as it tries to salvage its messaging patents after winning a ruling earlier this year that opened the door for more appeals of Patent Trial and Appeal Board decisions.
The appeals court said it was allowing both the USPTO’s new director, Andrei Iancu, and Broadcom Corp. to weigh in on whether it should grant Wi-Fi One’s petition in.
January 09, 2018
Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) (en banc)
Quote: 'The (PTAB) Board denied Wi-Fi One the opportunity to take discovery regarding the relationship of the parties, and the Federal Circuit denied a petition for a writ of mandamus. Ultimately, the (PTAB) Board instituted the IPRs, and issued Final Written Decisions finding the challenged claims unpatentable'.
What about SFOR patents after PTAB review:
DECISION - October 17, 2017
Denying Institution of Inter Partes Review 37 C.F.R. § 42.108
Duo Security Inc., Centrify Corporation, and Trustwave Holdings, Inc. (collectively, “Petitioner”) filed a Petition requesting inter partes review of claims 1–17, 19–24, 53, and 54 of U.S. Patent No. 8,484,698 B2 (Ex. 1001, “’698 patent”). Paper 2 (“Pet.”). StrikeForce Technologies, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’698 patent. Thus, for the reasons given below, we deny institution of an inter partes review.
III. CONCLUSION
In conclusion, for the reasons given, we determine that the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that the challenged claims of the ’698 patent, claims 1–17, 19–24, 53, and 54, are unpatentable. Thus, we do not institute inter partes review of any of the challenged claims on any of the asserted grounds. IV. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), the Petition is denied, and no trial is instituted as to any claim of U.S. Patent No. 8,484,698 B2.
Also notice this excerpt from Ropes & Gray March 26, 2018 Appeal Response:
In the IPR proceedings, the Petitioners were forced to combine at least three different references to try to cobble together a system that approximates the structure and functionality of the Asserted Claims. Even then, and under the PTAB’s “preponderance of the evidence” standard, the petitioners still could not demonstrate that there was a reasonable likelihood that their complicated combinations mirror the unique and novel architecture of the Asserted Patents and invalidate the challenged claims. As was apparent to the PTAB, the ordered combination of elements in the Asserted Claims is not so “conventional” as the district court assumed. The reexamination proceedings for the ’599 Patent also confirm that the Asserted Patents embody an inventive concept. During those proceedings, the Examiner found all claims patentable and allowed seven new claims, concluding that “the prior art cited by the Requesters fails to teach or suggest” all the limitations of the ’599 Patent claims.
CONCLUSION
WHEREFORE, for the foregoing reasons, StrikeForce respectfully requests that this Court reverse the decision dismissing StrikeForce’s Complaint with prejudice find that the Asserted Claims are in fact patent-eligible under 35 U.S.C. § 101; and remand for trial. At the very least, this Court should vacate the district court’s ruling and remand for further factual findings as to whether the claimed combination of elements was well-understood, routine, and conventional.
Case: 18-1470 Document: 17 Page: 69 Filed: 03/26/2018
Respectfully submitted,
Douglas H. Hallward-DriemeierDouglas
With the Supreme Court saying that the PTAB has the Constitutional right to determine patentability we need to just take our millions of shares (if we have them) and hold them tight!!
Why would the Federal Appeals court even send this down to rule on it when the District court failed to provide ONE precendent for their Alice 35/101 ruling?
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