News & Analysis as of

Software Patent Trial and Appeal Board

McDonnell Boehnen Hulbert & Berghoff LLP

91%: That is the Rate at Which the PTAB Affirms Examiner Section 101 Rejections

Over the last two years, we have studied the examiner affirmance rates of the Patent Trial and Appeal Board (PTAB) for § 101 rejections.  The PTAB is the administrative court of the U.S. Patent and Trademark Office (USPTO)...more

Alston & Bird

Patent Case Summaries | Week Ending July 19, 2024

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Miller Mendel, Inc. v. City of Anna, Texas, Nos. 2022-1753, -1999 (Fed. Cir. (E.D. Tex.) July 18, 2024). Opinion by Cunningham, joined by Moore and Stoll. Miller Mendel sued City of Anna, Texas for infringement of a patent...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

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The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

Haug Partners LLP

Apple v. Corephotonics: PTAB Decision Focused on Expert’s “Typographical Error” Rather than the Parties’ Arguments Violated...

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On September 11, 2023, the Federal Circuit issued a precedential opinion that vacated and remanded two final written decisions of the Patent Trial and Appeal Board (the “Board”) in Apple, Inc. v. Corephotonics, Ltd.. The...more

Knobbe Martens

Federal Circuit Review - October 2021

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No Assembly, No Infringement – Federal Circuit Declines to Expand the “Final Assembler” Theory of Direct Infringement In Acceleration Bay LLC v. Take-Two Interactive Software, Appeal No. 20-1700 the Federal Circuit held that...more

Holland & Knight LLP

A Bad Day for this Patent Applicant: Travel Itinerary Applications Ineligible Under Section 101

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In the case of In re Bongiorno, No. 2020-1835, 2021 WL 1997454, at *4 (Fed. Cir. May 19, 2021), patent applicant James Bongiorno appealed the Patent Trial and Appeal Board's (PTAB) finding that two of his patent applications...more

Fox Rothschild LLP

How To Patent Software And Computer-Implemented Business Methods In The US And Abroad

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It is well known that in the U.S., abstract ideas, laws of nature, natural phenomena, and products of nature are all excluded from patenting under 35 U.S.C. § 101. This article briefly outlines various U.S. approaches to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - March 2020

In extraordinary times, sometimes the ordinary is comforting, so we want to bring you a short newsletter this month and provide some operating details for the major patent agencies in the US. First, we hope all our...more

Sheppard Mullin Richter & Hampton LLP

Intellectual Property Outlook: Cases and Trends to Follow in 2020 – Part 1

PART 1: IP ISSUES CURRENTLY PENDING BEFORE THE SUPREME COURT - In the first part of our series, we briefly summarize the intellectual property issues that the Supreme Court has already agreed to address in 2020. In...more

McDonnell Boehnen Hulbert & Berghoff LLP

Ex parte Smith (PTAB 2019)

Software Claims Survive Section 101 Challenge and Are Found to Be Directed to Patent-Eligible Subject Matter - In the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) recently designated its...more

Knobbe Martens

Jury Orders U.S. Bancorp to Pay $3 Million to Solutran for Infringing Patents for Paper Check Processing Technology

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Patent Judgments & Awards - In another win in a string of victories for Solutran, Inc. in its long-running patent dispute with U.S. Bancorp, a jury in the U.S. District Court in Minnesota found that Solutran was entitled...more

McDermott Will & Emery

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Kayak Software Corp. v. International Business Machines Corp. (PTAB 2016) - PTAB Follows Strict Application of CBM Statute...

Petitioners, KAYAK Software Corp., OpenTable, Inc., Priceline.com LLC, and The Priceline Group Inc. filed a Petition requesting a covered business method (CBM) patent review of claims 1–9 and 12–17 of U.S. Patent No....more

McDonnell Boehnen Hulbert & Berghoff LLP

BMC Software, Inc. v. zIT Consulting GmbH (PTAB 2016) - CBM Patent Review Denied for Claims Lacking Financial Subject Matter

The PTAB denied institution of a covered business method (CBM) patent review in a case between BMC Software Inc. (Petitioner) v. zIT Consulting GmbH (Patent Owner). Petitioner, BMC Software, Inc., filed a Petition to...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - August 2016

Covered Business Method Patent Review: What Constitutes a Financial Product or Service? Along with inter partes review (IPR) and post-grant review (PGR), the America Invents Act (AIA) created a transitional program for...more

McDonnell Boehnen Hulbert & Berghoff LLP

Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. 2016)

On March 1, 2016, the Federal Circuit issued an opinion in a number of related appeals between Blue Calypso, LLC and Groupon, Inc. These related appeals arise from five Covered Business Method (CBM) reviews of five patents...more

Seyfarth Shaw LLP

The PTAB Giveth, and the PTAB Taketh Away

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The PTAB cancelled claims of a financing patent as lacking patentable subject matter in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (PTAB January 25, 2016, Order) (McKone, APJ). Westlake is interesting...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - October 2015 #3

DISTRICT COURT CASES - Mobile Device Data Monitoring Patent Not Directed to Abstract Idea Under § 101 - On October 26, 2015, Judge Sparks of the Western District of Texas denied defendant’s motion for summary...more

Knobbe Martens

[Webinar] Software Patent Eligibility - A Post-Alice Landscape Discussion - Nov. 10th, 10:00am PST

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Join our panel of Knobbe Martens partners for this complimentary and informative webinar to discuss the state of software patent eligibility after Alice Corp v. CLS Bank International. Since the Supreme Court's...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Mintz - Intellectual Property Viewpoints

Fed Circuit Reverses PTAB Decision in IPR Proceeding

On June 16, the Federal Circuit issued its first-ever reversal of a Patent Trial and Appeal Board decision in an America Invents Act post-grant proceeding. The opinion, drafted by Chief Judge Prost and joined by CAFC Judge...more

McDonnell Boehnen Hulbert & Berghoff LLP

Interim Guidance Status Check

As of Tuesday, June 16th, we have been living with the U.S. Patent and Trademark Office's "2014 Interim Guidance on Patent Subject Matter Eligibility" ("Guidance") for six months. Although the USPTO subsequently issued some...more

McDermott Will & Emery

Technological Invention Exception Key to Foiling CBM - Bloomberg Finance LP v. Quest Licensing Corporation; Apple Inc. v....

In four orders addressing the requirements for instituting a covered business method (CBM) review, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB)) found the “financial product or service”...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the...more

McDermott Will & Emery

IPR Privity Analysis Includes Post-Complaint Period - VMWare, Inc. v. Good Technology Software, Inc.

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Clarifying the privity requirement for inter partes review (IPR) petitions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) explained that privity should be determined looking at the...more

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