Patent That Survived Alice Is Not Obvious

A little less than a year after finding that claims of U.S. Patent No. 6,474,159, directed to an inertial tracking system, were patent-eligible under the Alice abstract idea test, the Federal Circuit has affirmed a decision of the… Read More

Patent Eligibility and Obviousness in a Covered Business Method Patent Review

The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading… Read More

Low Bar for USPTO to Show Motivation to Combine

A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined.  In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (F… Read More

When Is Hindsight Impermissible in an Obviousness Rejection?

According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc.… Read More

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circ… Read More

CAFC Affirms PTAB Claim Construction of “Connected”

In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permane… Read More

Motivation to Combine References Need Not be Explicit

How much motivation do you need to combine references to make something obvious? According to the Federal Circuit, enough to reasonably discern a proper path to combine the references. In Cablz, Inc. v. Chums, Inc., No. 2016-1823… Read More

Patent Prior Art and the Necessity Requirement for Inherency

A patent claim limitation can only be inherently disclosed by patent prior art when such limitation is necessarily a component of a disclosed subject matter. In Southwire Co. v. Cerro Wire LLC, No. 2016-2287 (Fed. Cir. Sept. 8, 20… Read More

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

Upcoming Webinar

Christopher Francis and Charles Bieneman will conduct Part Two of a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements…Register

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