On May 22, 2019, a bipartisan committee of the U.S. Senate and House released a draft bill on § 101 reform, in a further attempt to reduce procedural obstacles for patent applicants.
The draft bill would change the...more
For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever.
Late last year, the PTAB...more
On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note. The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a...more
Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more
4/23/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Intellectual Property Protection ,
Mayo v. Prometheus ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Proposed Regulation ,
Section 101 ,
Senate Judiciary Committee ,
USPTO
Blockchain is a technological innovation underlying cryptocurrencies like Bitcoin. Given the importance of cryptocurrencies not only for buying and selling goods and services, but also as funding and investment vehicles, the...more
Federal Circuit Summaries -
Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board.
Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a...more
12/29/2017
/ Anticipation ,
Anticipatory Reference ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard
The Federal Circuit held that the PTAB may consider legal conclusions of obviousness by experts, but the expert papers must make adequate factual findings and provide a satisfactory explanation as to determinations of...more
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
11/22/2016
/ Abstract Ideas ,
Appeals ,
Claim Construction ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Mayo v. Prometheus ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
USPTO
The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s...more
10/4/2016
/ Appeals ,
Ariosa ,
CLS Bank v Alice Corp ,
Evidence ,
Mootness ,
Myriad-Mayo ,
Patent-Eligible Subject Matter ,
Patents ,
Preemption ,
Prior Art ,
Reversal ,
Sequenom ,
Software Patents
The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion. Informative opinions are not binding; they rather provide guidance on rules and...more
Last week, the Patent Trial and Appeal Board added a decision declining to apply estoppel under 35 USC 325(e)(1) to dismiss a follow-on CBM proceeding in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 to the...more
Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549, Paper 10 (P.T.A.B. Mar. 26, 2015) -
The Board recently added a decision denying inter partes review in Dell, Inc. v. Electronics &...more
The Board recently added an order in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, to its list of Representative Decisions on Motion to Amend on the Board’s web site. The decision outlines in...more
The AIA sets a one-year deadline to file a petition for IPR of a patent from the date a complaint for patent infringement is served. 35 U.S.C. § 315(b). There is an exception: the bar does not apply when joining a second...more
In July 2013, Cardiocom filed a petition for IPR of a patent. Petitioner Medtronic then acquired Cardiocom. In January 2014, the Board decided to move forward on eight claims and declared trial on two obviousness grounds,...more
Petitioner Unilever filed an earlier petition for IPR of 33 claims of a patent. In the Decision on Institution, the Board denied review of 11 claims and granted review of the rest. Unilever then filed a second petition for...more
In January 2013, Petitioner IBS filed a petition for IPR. Five months later, IBS filed a second petition for IPR on the same patent claims. The follow-on petition relied on art from the first petition and other prior art,...more
Petitioner Metronic had previously filed two other petitions for IPR of a patent. The Board instituted trial on one of the petitions and denied the other. Medtronic then filed a third petition for IPR of the patent that...more
Petitioner Unified filed a petition for IPR of 11 claims of a patent. Unified acknowledged that the patent was already subject to three other petitions for IPR and that the Board had instituted trial on two of those three...more
In this inter partes review proceeding, the challenged patent, filed in July 2011, purported to be a continuation of a parent application filed in September 2009. Petitioner PRISM argued the challenged claims lacked written...more
In the recent cases OCTANE FITNESS, LLC v. ICON HEALTH & FITNESS, INC. and HIGHMARK INC. v. ALLCARE HEALTH MANAGEMENT SYSTEM, INC., the U.S. Supreme Court empowered district court judges to award attorney fees to prevailing...more
6/13/2014
/ Akamai Technologies ,
Attorney's Fees ,
Exceptional Case ,
Fee-Shifting ,
Highmark v. Allcare ,
Induced Infringement ,
Limelight ,
Limelight Networks ,
Nautilus Inc. v. Biosig Instruments ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
SCOTUS ,
USPTO
In light of these decisions, patentees with weak cases may think twice about filing, now that they face a credible risk of having to pay defendants’ attorney fees. By the same token, accused infringers with questionable...more
In This Presentation:
- Software Patents Issues in the USPTO
- Functional Claiming in Software Patents
- Covered Business Method (CBM) Review
- Will the Supreme Court kill all software patents this term?
-...more