IP Blog
35 U.S.C. §§ 102, 103
Federal Circuit Vacates PTAB Opinion in Google Application
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
A Photobooth Can Screen for Skin Cancer, But Federal Circuit Says it is Unpatentable Under § 103
Can you succeed in an argument for obviousness by combining a skin cancer detection device with a device for creating made-to-measure clothing or custom avatar? The Federal Circuit says yes. In a precedential opinion, the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB), holding that a series of references related to imaging the surfaces of...
References Still “Printed Publications” and Publicly Accessible under § 102 on a Poorly Designed Website
In a precedential opinion, the Federal Circuit upheld the decision of the USPTO’s Patent Trial and Appeal Board (PTAB) that documents presented at an industry task force meeting and later made available on the task force website qualify as printed publications under 35 USC § 102. M & K Holdings v. Samsung Elecs. Co., 2020-1160, (Feb. 1, 2021; Opinion by...
Design Choice and Obviousness under 35 U.S.C. § 103 at the Federal Circuit: Uber Tech., Inc. v. X One, Inc.
The Federal Circuit has reversed a PTAB determination of non-obviousness because, where the PTAB found no motivation to combine references, the Federal Circuit found a combination of references presented a simple design choice between a predictable, finite number of possibilities. Uber Tech., Inc. v. X One, Inc., No. 2019-1164 (May 5, 2020) (Chief Judge Prost, joined by Judges Dyk and...
CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.
The Federal Circuit, in vacating the Patent Trial and Appeal Board’s (PTAB) decision in an inter partes review (IPR) that claims in a patent were not obvious, held that, for an obviousness inquiry, reference numerals in the claims “do[] not limit the disclosure of the claims.” Grit Energy Solutions, LLC v. Oren Technologies, LLC, 2019-1063 (Fed. Cir. Apr. 30, 2020)...
Prior Art Anticipates Claims because “A” means “One or More”
The Central District of California held that claims directed to “‘an induction actuated container which is capable of automatically opening when a user is approaching, and automatically closing when the user has left’” are invalid because they are anticipated by prior art. Nine Stars Group (U.S.A.), Inc. v. Factory Direct Wholesale, LLC, No. 18-6471 PSG (PJWx) (C.D.Cal. Apr. 6, 2020)...
CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.
The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea...
Claim Interpretation and the Enablement Requirement
Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid...
Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction
In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were held invalid because as anticipated by prior art. VR Optics, LLC v. Peloton Interactive, Inc, No. 16-cv-6392 (JPO) (S.D.N.Y. Apr. 2, 2020) (patent-in-suit is U.S. Patent No. 6,902,513). The court noted...
CAFC Affirms Use of “General Knowledge” in Obviousness Analysis
The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the...