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
Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated...more
They may have known that it was coming. Over the last several weeks, lobbying organizations and high-tech blogs have been slowly introducing the same old false, misleading, and deceptive arguments against patent law. These...more
Bad law often gives rise to creative legal arguments. But the application of such creative lawyering is necessarily bounded by ethical rules and notions of fair dealing. Patent eligibility, in its current incarnation, has...more
Self-similarity is a characteristic found in many physical, natural, and human-made systems. In short, it describes a class of structures or behaviors that are at least partially-invariant to time or scale. Thus, these...more
Can a prior art reference with an error be considered to be a disclosure of the erroneous teaching? A Federal Circuit panel split over this issue, with their disagreement largely based on how apparent the error would be to...more
In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and...more
The legal concept of obviousness is tricky. A claimed invention is found obvious if the prior art teaches or suggests all claim limitations and one of ordinary skill in the art would have been motivated to combine the...more
Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written...more
Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. ...more
Apple filed a successful petition for Inter Partes Review (IPR) of Personal Web Technologies' U.S. Patent No. 7,802,310. In its final written decision, the Patent Trial and Appeal Board (PTAB) agreed with Apple's contention...more
Synopsys brought a patent infringement action against Mentor Graphics in the Northern District of California, alleging infringement of various claims of U.S. Patent Nos. 5,530,841, 5,680,318, 5,748,488, and 6,836,420. Claim...more
Anecdotally, there seems to be a loosening up regarding the application of § 101 by the District Courts. The 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int'l has been referred to as sounding a death knell for...more
10/17/2016
/ Bascom Global v AT&T Mobility ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Enfish v Microsoft ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Software ,
USPTO
McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more
8/15/2016
/ Administrative Proceedings ,
Appeals ,
Burden of Proof ,
Burden-Shifting ,
Evidence ,
Fracking ,
Inter Partes Review (IPR) Proceeding ,
Intervenors ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
USPTO
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections -
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
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
7/16/2015
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
SCOTUS ,
USPTO