On July 1, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) designated four of its recent 35 U.S.C. § 101 decisions as informative. Each of these decisions came down after and applied...more
On January 7, 2019, the U.S. Patent and Trademark Office published updated examination guidance, instructing the examining corps and the PTAB how they should apply 35 U.S.C. § 101. On the same day, the USPTO also published...more
On January 7, 2019, the U.S. Patent and Trademark Office published updated examination guidance, instructing the examining corps and the PTAB how they should apply 35 U.S.C. § 101. On the same day, the USPTO also published...more
On January 7, 2019, the U.S. Patent and Trademark Office published updated examination guidance, instructing the examining corps and the PTAB how they should apply 35 U.S.C. § 101. On the same day, the USPTO also published...more
One final 35 U.S.C. § 101 case inched across the finish line at the end of 2018. And while this one is not particular remarkable substantively, its concurrence from a particularly opinionated judge may give it an unwelcome...more
Earlier this month, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) changed a number of decisions to "informative" status. An informative decision reflects "the Board's general...more
The Patent Trial and Appeal Broad (PTAB) of the U.S. Patent and Trademark Office has often been criticized for being particularly harsh when reviewing appeals of claims rejected by an examiner of grounds of patent-ineligibly...more
Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written...more
Petitioner Cloud9 requested covered business method (CBM) review of IPC's U.S. Patent No. 8,189,566 before the USPTO's Patent Trial and Appeal Board. Due to the claims of the '566 patent not reciting a financial element, the...more
Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. ...more
Apple filed a successful petition for Inter Partes Review (IPR) of Personal Web Technologies' U.S. Patent No. 7,802,310. In its final written decision, the Patent Trial and Appeal Board (PTAB) agreed with Apple's contention...more
McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more
8/15/2016
/ Administrative Proceedings ,
Appeals ,
Burden of Proof ,
Burden-Shifting ,
Evidence ,
Fracking ,
Inter Partes Review (IPR) Proceeding ,
Intervenors ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
USPTO
Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more
USPTO SealAs the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle...more
Section 18 of the Leahy-Smith America Invents Act (AIA) established a transitional program through which the USPTO conducts post-grant reviews of covered business method (CBM) patents. For the most part, § 18 incorporates...more
7/16/2015
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
SCOTUS ,
USPTO
The press has been all too eager to decry the so-called "broken" U.S. patent system and the alleged "scourge" of non-practicing entities (NPEs). However, few if any articles attempt to provide an even-handed analysis of...more
12/19/2014
/ CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Nautilus Inc. v. Biosig Instruments ,
Non-Practicing Entities ,
Obviousness ,
Octane Fitness v. ICON ,
Patent Litigation ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patent Trolls ,
Patents ,
SCOTUS ,
Software
As the fallout of the Supreme Court's Alice Corp. v. CLS Bank decision propagates through the USPTO and lower courts, many patent applications and patents directed to business methods are being rejected or struck down for...more
In an example of judicial reasoning rolling downhill, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has struck down claims directed to a computer-implemented business method as failing to meet...more