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) deter… Read More

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… Read More

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 pa… Read More

§ 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… Read More

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 R… Read More

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… Read More

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 Circui… Read More

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 decisi… Read More

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 clai… Read More

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 main… Read More