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

Obviousness Upheld with Secondary Reference Unrelated to Field of Technology

When can prior art references be combined to invalidate patent claims as obvious under 35 U.S.C. § 103?  Here is one case providing a lesson on this question.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd.,… 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

Unpredictability, not Inherency, Important for Obviousness

In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rej… Read More

PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

The PTAB recently declined to institute CBM on US8189566 titled “Software based trading turret.” According to the patent specification, “[a] trading turret system is a specialized telephony switching system that… 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

IPR Estoppel Regarding Petitioned, Non-Instituted Claims

A Wisconsin district court held that 35 U.S.C. § 315(e) can estop an accused infringer from challenging a patent claim’s validity when based on a new invalidity theory, even when the PTAB did not institute review of the claim.… Read More

CAFC Vacates PTAB Decision Based on Claim Interpretation of "Aseptic"

The Federal Circuit, in Nestle USA v. Steuben Foods, vacated a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) for an unreasonably broad interpretation of the term “aseptic.” Notably, where… Read More

Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and c… 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

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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