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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. First, the Patent Owner made unsuccessful arguments that elements described in the specification but not explicitly claimed somehow breathed a patentable technological innovation into the claims. Second, the PTAB continues to explicitly rely on the USPTO’s 2019 revised § 101 guidance that has been questioned, and even disregarded, by the Federal Circuit. The CBM proceeding had been instituted for all claims (1-49) of the ’051 patent, solely on the issue of patent-eligibility under 35 U.S.C. § 101. The PTAB considered independent claim 13 to be illustrative: A computer implemented method…

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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 under Section 101 . Two recent cases saw the Patent Owner make the argument that it needs to make under 35 U.S.C. § 325(d), namely that the Petitioner was simply rehashing arguments already rejected by a patent examiner. These arguments were to no avail. As the PTAB receives more and more petitions for Post-Grant Review on Section 101 grounds, we may see the PTAB second-guess the examining corps regarding the patent-eligibility of more and more recently-issued patents. In Supercell Oy v. Gree, Inc., Case PGR2018-00061, Patent 9,700,793 B2 (PTAB Oct. 16, 2018),…

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Ex Parte Jung De-Designated as Informative by PTAB

A previous post discussed Ex parte Jung, which was designated as Informative by the PTAB on July 10, 2018.  In a bulletin posted on August 7, 2018, the PTAB states that: It has come to PTAB’s attention that the decision has not been read as intended. For example, the designation was not intended to reflect new or changed policies with respect to claim construction. As a result, in order to avoid any confusion, the decision has been de-designated and removed from the list of informative decisions. The case remains a routine decision of the Board… This case nonetheless raised an interesting discussion of SuperGuide Corp. v. DirecTv Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which interpreted language in the form of “at least one of A and B” to mean at least one of A and at least one of B, as well as the line of subsequent cases discussed in the…

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“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018).  The claim, in pertinent part, at issue reads: A method for playing back a scene using Universal Plug and Play (UPnP), comprising: [A.] sending, by a control point, a request for a scene to be played back to a media server that stores Audio/Video (AV) content; [B.] receiving, by the control point, one or more scene objects comprising the scene to be played back from the media server in response to the request, each scene object including metadata representing at least one of [i.] a precedence relation indicating the scene object’s location in a sequence of scene objects and [ii.] a connection relation indicating one…

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Coffin Patent Lives on after IPR

The Federal Circuit agreed with the Patent Trial & Appeal Board that the claim language “form a casket body” was a structural limitation, not an intended use, and affirmed the final written decision of PTAB finding that the inter parte review petitioner failed to demonstrate that the claims were unpatentable.  Matthews International Corp. v. Vandor Corp. (Fed. Cir., decided March 27, 2018). The patent at issue is US8,104,151 and claim 1 reads as follows, with emphasis added: 1. A casket arrangement having a first configuration and a second configuration, comprising: a bottom panel formed of a pliable material; side panels formed intrinsically with the bottom panel of the pliable material, each side panel including a lower section and an upper section foldably attached thereto, the lower section extending vertically upward from the bottom panel, the upper section in the first configuration extending upward from the lower section and in the…

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