Appeals Patents

News & Analysis as of

Double-Checking the PTAB

By Bryan K. Wheelock, Principal The Federal Circuit’s docket is burgeoning with Patent Office appeals.  Three years ago there were 118 appeals from the USPTO pending before the Federal Circuit. Today there are 578.  The bulk...more

Federal Circuit Review | November 2016

Fraud-Detection Patent Claimed Patent-Ineligible Subject Matter - In FairWarning IP, LLC v. Iatric Systems, Inc., Appeal No. 2015-1985, the Federal Circuit affirmed the district court’s holding that FairWarning’s patent...more

Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016)

Computerized Restaurant Ordering Menu Patents Found to Be Directed to Unpatentable Subject Matter - The U.S. Court of Appeals for the Federal Circuit reviewed a Patent Trial and Appeal Board (PTAB) decision in three...more

The Difficulty in Implementing an Idea Does Not Mean the Idea is Not Abstract

In Apple, Inc., v. Ameranth, Inc., [2015-1703, 2015-1704] (November 29, 2016), the Federal Circuit affirmed in part and reversed in part the PTAB’s subject matter eligibility determination of claims of U.S. Patent Nos....more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

Roxane Laboratories, Inc. v. Camber Pharmaceuticals Inc. (Fed. Cir. 2016)

The patent prosecutor's art requires exquisite foresight, if not prescience, in balancing the requirements for specificity needed to satisfy the disclosure requirements of § 112 while anticipating efforts to design around the...more

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review - Brooks Kushman Post-Grant

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written...more

A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB’s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the...more

The World in US Courts: Orrick's Quarterly Review of Decisions Applying US Law to Global Business and Cross-Border Activities

Alien Tort Statute (ATS)/Torture Victims Protection Act (TVPA)/Anti-Terrorism Act (ATA) - District Court Dismisses ATS Claim Where Alleged Conduct in US Was Not Directly Linked to Injuries Claimed in Other Countries...more

Swearing Behind A Reference With Reasonably Continuous Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says

The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents. On November 21, 2016, the Federal Circuit ruled in Unwired...more

Magistrate’s Recommendation That The Case Be Dismissed For Lack Of Subject Matter Jurisdiction Is Adopted

Stark, C. J. Plaintiff’s objections are overruled and magistrate’s report and recommendations adopted in full. This case involves a challenge to the result of a PTO interference declared after September 15, 2012....more

BPCIA Litigation Roundup (Fall 2016)

Below is our Fall 2016 update on the U.S. patent litigations concerning proposed or approved biosimilar products. For additional details, please consult our BPCIA Litigation Summary Chart or our previous quarterly update...more

Disavowal of Claim Scope in a Trash Bag Patent

The US Court of Appeals for the Federal Circuit affirmed a district court’s narrow claim construction, finding that the specification and prosecution history of the patent-at-issue contained clear and unequivocal statements...more

Determining Patent Eligibility Pre-Claim Construction May Be Premature

For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc. In a divided opinion, the Federal Circuit reversed the district court and held...more

Prosecution History Disclaimer of Claim Scope Must Be “Clear and Unambiguous” in View of the Prosecution History as a Whole

Addressing the issue of prosecution history disclaimer, the US Court of Appeals for the Federal Circuit upheld the district court’s claim construction, finding that selected statements during prosecution did not constitute a...more

Federal Circuit Rules that Patents Directed to Collecting and Filtering Network Data Are Eligible, Further Refining Alice/Mayo...

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016) - In a recent case, the U.S. Court of Appeals for the Federal Circuit revisited the vexing problem of assessing patent eligibility...more

Evolving Post-Alice Law on Patent Eligibility

In two recent cases addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit found the challenged claims patent ineligible. In both cases, the Federal Circuit cited its Enfish...more

Federal Circuit Split On Specification's Role In Determining Patent Eligibility

The U.S. Court of Appeals for the Federal Circuit recently reversed a district court ruling that four related software patents are patent ineligible under 35 U.S.C. §101, by considering the specification to determine that the...more

Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of...more

In re NuVasive Brings the Administrative Procedure Act to IPRs

NuVasive owns US 8,187,334, which claims certain spinal implants. Medtronic filed a petition challenging various claims of the ‘334 patent as obviousness over US 2002/0165550 (Frey) in view of US 5,860,973 (Michelson). ...more

Federal Circuit Invalidates Synopsys’ Chip Design Patents as Unpatentable Abstract Ideas

The Federal Circuit’s recent decision in Synopsys, Inc. v. Mentor Graphics Corp., Case No. 2015-1599 (Fed. Cir. Oct. 17, 2016), upholding the lower court’s grant of summary judgment of invalidity under § 101, may provide...more

Federal Circuit Judges Disagree Over Contours of Section 101

The increased prominence of Section 101 in computer-related patent disputes stems from the Supreme Court case of Alice Corp. v. CLS Bank. Before Alice reached the Supreme Court, ten judges of the Federal Circuit considered...more

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

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