News & Analysis as of

Section 101 Patent Trial and Appeal Board Prior Art

WilmerHale

Federal Circuit Patent Watch: Patents That Merely Claim Applying Machine Learning to a New Field of Use Are Not Patent Eligible

WilmerHale on

Stark, J. Sage Products, LLC (“Sage”) challenged a Patent Trial and Appeal Board (“Board”) decision finding two of Sage’s patents unpatentable. After the original appellee, Becton, Dickinson and Co., withdrew, the Director of...more

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

AI IP Year in Review - Patent Law and Generative AI 101

While Artificial Intelligence (AI) solutions, such as predictive AI, have been around for decades, generative AI systems are recent innovations with far reaching implications for patent law. Generative AI, such as ChatGPT,...more

Erise IP

Eye on IPRs, June 2024: What’s Next for the Design Patent Obviousness Test; Federal Circuit Ruling on Printed Matter

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Design Patent Obviousness Test Thrown Out - The U.S. Court of Appeals...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Akin Gump Strauss Hauer & Feld LLP

Senior Circuit Judge Issues Split Decision on Patent Eligibility of Claims Directed to Restricting Access to Computer Files

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023 #3

Sequoia Technology, LLC v. Dell, Inc., Appeal Nos. 2021-2263, -2264, -2265, -2266 (Fed. Cir. April 12, 2023) In an appeal from a stipulated judgment of noninfringement and invalidity following an adverse claim construction...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Holland & Knight LLP

Something New: PTAB Tackles Section 101 Patent Eligibility

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It's not often that we write about pharmaceutical patents on this blog, and even less often that we blog here about PTAB decisions. The former is a function of the Federal Circuit's decision in Vanda Pharmaceuticals Inc. v....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #5

Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more

WilmerHale

Federal Circuit Patent Watch: Assignor estoppel applies to claims that are not "materially broader" than the originally assigned...

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Precedential Federal Circuit Opinions - In Re MCDONALD [OPINION] (2021-1697, 8/10/2022) (Newman, Stoll, and Cunningham) - Cunningham, J. The Court affirmed a PTAB decision rejecting reissue claims under 35 U.S.C. §...more

Akin Gump Strauss Hauer & Feld LLP

In IPR, No Collateral Estoppel Based on § 101 Ruling in District Court

A panel of the Patent Trial and Appeal Board instituted inter partes review of a patent, rejecting the patent owner’s assertion that the petitioner’s obviousness arguments were collaterally estopped by a district court’s...more

McDonnell Boehnen Hulbert & Berghoff LLP

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2021)

Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101.  Patent holder MyMail was able to...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir....

The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Mintz - Intellectual Property Viewpoints

“Anything Goes” – Federal Circuit Says PTAB Can Use Any Means to Knock Out Substitute Claims (Uniloc v. Hulu: Part 2)

Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

McDermott Will & Emery

Special Report - 2019 IP Law Year in Review - Patents

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2019 was another milestone year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that will affect your company’s litigation, patent prosecution or...more

Mintz - Intellectual Property Viewpoints

An Informative PTAB Decision on Patent Eligibility under 35 U.S.C. § 101

The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Designates as Informative Three Decisions on Obviousness and Patent Eligibility

The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address...more

Bass, Berry & Sims PLC

USPTO Designates Three Decisions as Informative

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On December 11, 2019, the Patent Trial and Appeal Board (PTAB) designated three decisions as informative, adding to a significant number of decisions designated as either precedential or informative this year. One of these...more

Jones Day

Motion To Strike Invalidity Defense Denied… For Now

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On February 28, 2019, GREE, Inc. (“GREE”) filed a Complaint against Supercell Oy (“Supercell”) for patent infringement of U.S. Patent No. 9,597,594 (the “’594 Patent”), directed to a method for controlling a computer to...more

Knobbe Martens

Federal Circuit Review - September 2019

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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

Jones Day

Speech Recognition Patent Invalidated on Multiple Grounds in CBM Review

Jones Day on

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

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