IP Blog
USPTO Post-Issue Proceedings
Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice
In Nike v. Adidas (Fed. Cir. April 9, 2020) (precedential), the Federal Circuit addressed the notice provisions of the Administrative Procedures Act (APA) as they relate to the Patent Trial and Appeals Board (PTAB or Board) determination in an inter partes review (IPR) proceeding. Specifically, this precedential decision held that notice is required when the PTAB advances a novel theory...
Federal Circuit Says No to PTAB’s IPR Joinder Approach
In a highly anticipated Patent Trial and Appeal Board (PTAB) decision, the Federal Circuit ruled that the PTAB erred in allowing Facebook to join itself to a PTAB proceeding in which it was already a party. This decision focused on the interpretation of 35 U.S.C. § 315(c), which relates to the Patent Office’s ability to join a party in an...
Written Decision Needed For IPR Estoppel
In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the...
§ 112 Enablement and Written Description in Post-Grant Review
When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution...
Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification
All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method Review. Miami Int’l. Holdings, Inc. v. NASDAQ, Inc., CBM2018-00030, Patent 7,921,051 B2 (PTAB October 3, 2019). The decision is instructive for two reasons....
Limits on Obviousness - Beyond the Claim Elements
Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The PTAB had found that a skilled artisan would not have been motivated to combine the identified references, and that secondary...
State Universities Not Entitled to Sovereign Immunity from IPRs
Sovereign immunity does not exempt state governments from inter partes review, according to a Federal Circuit decision issued on Friday in Regents of the University of Minnesota v. LSI Corp. The decision extends the Federal Circuit’s earlier decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals that Native American tribes cannot rely on sovereign immunity against an IPR. This case...
Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility
Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding the claims ineligible under 35 U.S.C. § 101 and the Mayo/Alice test. Trading Technologies International, Inc. v. IBG, LLC, No. 2018-1063 (Fed. Cir. April 18,...
PGR Gives a Second Bite at Patent-Ineligibility
Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions. Even if the USPTO in the form of a patent examiner has deemed claims patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test, the USPTO in the form of the PTAB may turn around and deem the claims unpatentable...
Supreme Court Upholds IPRs in Oil States
On Tuesday, the Supreme Court released its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, holding that the inter partes review procedure does not violate Article III of the Constitution. The Court maintained the status quo, and IPRs are still a viable route for defending against or attacking a patent. The path to the Supreme Court...