Latest Posts › Patents

Share:

101 Patent Reform Progressing in Congress

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

"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

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

Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB

On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note.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

Legislators Propose “Section 101 Reform”

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

Banks Hate Cryptocurrency, But Are Filing Patents Anyway

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

Microsoft Corporation v. Biscotti, Inc.

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

Federal Circuit Holds That the PTAB May Consider Legal Conclusions of Obviousness by Expert Witnesses That Are Supported by...

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

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

Software Patent Eligibility: Preemption Gets Starring Role at the Federal Circuit

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

Catalog Search Posted On Claim Preclusion Does Not Bar Additional Discovery Relating to Privity Challenge in Later-Filed IPR...

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

CBM Claims Not Addressed in the PTAB's Final Decision May Be Challenged in a Follow-On CBM Proceeding

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

PTAB Estops Follow-On Petition for Inter Partes Review Based New Combinations of Prior Art Raised in Earlier Petition

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

PTAB Guides Patent Owners on Motions to Amend

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

PTAB Exercises Discretion When Rejecting Follow-On Petition Filed More Than One Year After Service of the Complaint with...

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

PTAB Denies Petition for Inter Partes Review When Ongoing Proceedings Raise Substantially Similar Arguments

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

PTAB Denies Follow-On Petition for Inter Partes Review Including Prior Art and Arguments Raised in Earlier Petition by Same...

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

PTAB Declines to Institute Follow-On Petition for Inter Partes Review Based on "New" Reference

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

PTAB Denies Petition for Inter Partes Review Remedying "Noted Deficiency" in Previously Denied Petition

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

PTAB Denies Follow-On Petition for Inter Partes Review Including Prior Art and Arguments Raised in Earlier Petitions by Different...

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

PTAB Declines to Revisit Written Description and Prior Art Issues Considered During Prosecution in IPR

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

Supreme Court Update: Four Important Decisions for IP

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

Weak Patent Case? Think Twice Before Filing, In Light of Two 'Exceptional' SCOTUS Decisions

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

Protecting and Enforcing your High Technology Intellectual Property

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

23 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide