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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 Tech. Int. Inc., Case CMB2016-00090 (PTAB December 7, 2017) the PTAB issued a Final Written Decision holding that US Patent 7,725,382 was not directed to patent eligible subject matter under 35 U.S.C. §101. In addition to the §101 holding, the PTAB held that the Petitioner failed to meet their burden to show that the ‘382 Patent was obvious over certain prior art under 35 U.S.C. §103. Representative claim 1 of the ‘382 Patent recites: 1. A method of canceling an order entered for a commodity at an electronic exchange, the method comprising: receiving data relating to the commodity from the electronic exchange, the data comprising an inside market with a current…

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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 (Fed. Cir. Dec. 22, 2017) (non-precedential), the court affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability, in an Inter Partes Review proceeding, of certain claims of U.S. Patent No. 6,904,796 (and, while not discussed in this post, also vacating the PTAB’s denial of the patent owner’s motion to amend certain claims).  The court agreed with the PTAB that there was a sufficient motivation to combine references to achieve a single tool for activating tire sensors where different references taught each of the various functionalities now claimed in a single tool. Independent claim 1 of the ’796 patent recites: A tool comprising a plurality of means for activating remote tire monitoring system tire…

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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. v. Voip-pal.com, LLC., IPR 2016-01201, Paper 54 (Nov. 20, 2017), the PTAB refused to invalidate patent claims as being obvious, under 35 U.S.C. § 103, based on a proposed modification that relied on the claims as a destination to guide a PHOSITA (person having ordinary skill in the art) to the modification, i.e., the proposed modification depended on impermissible hindsight reasoning. At issue was US Patent 8,542,815, owned by Viop-pal.com. Representative claim 1 includes the following features: in response to initiation of a call by a calling subscriber, receiving a caller identifier and a callee identifier; locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with…

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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 Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017). The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology…

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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 permanent connection.  As issue was US Patent 8,863,979. Representative claim 1 recites: 1. A lid assembly for a beverage container, comprising: a lid housing having a drink aperture; a seal arm connected to the lid housing and movable between a first position, wherein the seal arm is adjacent the drink aperture, and a second position, wherein the seal arm is distal the drink aperture, the seal arm being connected to the lid housing in the first position and the second position, the first position being an operable position for assisting in opening and closing the drink aperture, and the second position being a cleaning position wherein the drink aperture is open for cleaning the lid…

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