Talking PTAB with Bob Steinberg
Indefiniteness Before the PTAB
Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation - In M & K Holdings, Inc. v. Samsung Electronics Co.,Ltd., Appeal No. 20-1160, the Federal Circuit...more
State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more
The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
PATENT CASE OF THE WEEK - SIPCO, LLC v. Emerson Electric Co., Appeal No. 2018-1635 (Fed. Cir. Sept. 25, 2019) - In this appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision regarding covered...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
On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB)....more
The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task...more
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications...more
On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more
On July 18, 2017, the United States Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) instituted a covered business method (“CBM”) patent review for U.S. Patent No. 8,955,029 (“the ’029 patent”) on grounds of...more
The Federal Circuit recently clarified what patents are subject to the Transitional Program for Covered Business Method Patents, or CBM review, in Secure Axcess, LLC v. PNC Bank National Association. In clarifying what...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...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
Federal Circuit Finds That USPTO Board Interpreted CBM Statute Too Broadly - In an appeal of a Covered Business Method (CBM) patent review, the Federal Circuit overturned a decision by the U.S. Patent and Trademark...more
HP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc. The PTAB, however, determined that the...more
On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business...more
Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more
Addressing patent eligibility for a covered business method (CBM) review under Section 18 of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB, the Board) found the patents-at-issue to be eligible and...more
In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more
Addressing the requirements for joinder of a covered business method (CBM) review to an ongoing CBM review, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) found that petitioner met...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
The Federal Circuit yesterday issued a precedential opinion in Versata Development Group v. SAP America, Inc., Appeal No. 2014-1194 (Fed. Cir. Jul. 9, 2015), finding the claims invalid under 35 U.S.C. § 101. In addition to...more
Addressing the issue of what constitutes the “same or substantially the same” prior art or arguments, the Patent Trial and Appeal Board (PTAB or Board) chose not to exercise its discretion to deny two separate covered...more
United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co. - Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize...more