Talking PTAB with Bob Steinberg
Indefiniteness Before the PTAB
Is the little-used CBM patent review program the key to passage of § 101 legislation? Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101. The unabashed...more
Reasonably Continuous Diligence Is Not Negated If an Inventor Works On Improvements or Evaluates Alternatives to the Claimed Invention - In ATI Technologies ULC v. IANCU, Appeal Nos. 2016-2222, -2406, -2608, the Federal...more
In a precedential opinion, the Federal Circuit affirmed the determination by the Patent Trial and Appeal Board (“PTAB”) in a covered business method review proceeding that the claims of U.S. Patent No. 6,950,807 for providing...more
In a final written decision, the PTAB found all challenged claims patent-eligible in Tradestation Group, Inc. v. Trading Tech. Int’l, Inc., CBM2015-00161, Paper 129 (P.TA.B. Feb. 17, 2017), an uncommon result in a CBM...more
About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more
It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more
A Covered Business Method (CBM) review applies to patents that “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial...more
PTAB Ignores District Court Claim Construction, Finds Patent Invalid - On February 19, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent...more
Last year I christened the post-Alice impact on patents #Alicestorm, riffing on the hashtag #hellastorm used to refer to the Pineapple Express storms the drenched the Bay Area in December 2014. This year we have El Niño...more
FEDERAL CIRCUIT CASES - Federal Circuit Strikes Down Award of Attorneys’ Fees - In a decision that rejects a recent trend of district courts’ willingness to award attorneys’ fees since the Supreme Court’s 2014...more
The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) addressing the scope of estoppel under 35...more
In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more
In an order issued on a patent owner’s motion to terminate in connection with a second petition for covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or...more
Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more
In three parallel decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to validating payment and then granting access to data were eligible for covered business method (CBM) review and...more
Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...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
For the first week of April, AliceStorm continues unabated, and though the indices are down, the damage spreads. Not surprisingly, the Eastern District of Texas appears to have become the eye of the storm--that place of calm...more
LinkedIn Corp. v. AVMarkets, Inc. - Addressing patent eligibility in a covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) concluded that...more
The Supreme Court’s Alice Corp. v. CLS Bank Int’l decision has had a significant impact on the prosecution of software-based patent applications, on the institution of 101-based covered business method patent reviews, and on...more
Patent Claims on Media Distribution Over Internet Not Patentable - In ULTRAMERCIAL, INC. v. HULU, LLC, Appeal No. 2010-1544, the Federal Circuit affirmed a motion to dismiss under Fed. R. Civ. P. 12(b)(6) because a...more