Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc… Read More

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U… Read More

CAFC Affirms PTAB Construction of “Connected to a...Network”

Based on a plain and ordinary meaning – and the patentee’s clear statement in distinguishing prior art during prosecution – the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) finding of invalidity of patent… Read More

On-Sale Bar and the AIA: New Language, Same Meaning

Despite a change in statutory language, the applicability of the on-sale bar to pursuing patent rights under the America Invents Act (AIA) is unchanged from prior law, said the Federal Circuit in Helsinn Healthcare S.A. v. Teva Ph… Read More

Online Listing = Offer for Sale for Patent Infringement?

Robert Blazer sued eBay alleging that a product listed by an eBay seller was liable for patent infringement (directly, contributorily, and by inducement).  eBay successfully moved for summary judgment on the ground that it had n… Read More

Patent Obviousness and Reasonable Expectation of Success

The Federal Circuit has (mostly) sustained the PTAB’s findings that claims of US Patent No. 7,433,483 are obvious over prior art, explaining that obviousness under 35 USC § 103 required, in essence, a showing that the proposed… Read More

PTAB Rejects Secondary Considerations for Patentability

Even though there was no dispute that a commercially successful product encompassed challenged patent claims, the USPTO’s Patent Trial and Appeal Board held that a patent owner failed to show secondary considerations of non-obvi… Read More

CAFC Explains Obviousness Needs Prior Art Support

A recent Federal Circuit case explains that the Patent Office cannot simply assume, interpolate, or make up reasons why patent claims are obvious, e.g., why prior art references would have been combined.  In In re Schweickert, No… Read More

Secondary Considerations Succeed at the PTAB

In a rare instance of relying on secondary considerations to overcome an allegation of obviousness, the Patent Trial and Appeals Board refused to institute an Inter Partes Review of U.S. Patent No. 8,550,271, directed to a crimp-o… Read More

PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTA… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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