PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.
Recent Blog Posts
- Federal Circuit Overturns PTAB’s Finding of Patent Validity In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland initially petitioned the PTAB for an inter partes review of all claims of U.S. Patent No. 7,581,688 (“the ’688 patent”), assigned to Whirlpool, arguing that the... More
- Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB. SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. 8,601,154 (“the ’154 patent”) directed to a data communication system connecting on-line networks with on-line and off-line computers. Google challenged the validity of the ’154 patent... More
- Federal Circuit Affirms Cancellation of Claims Based on Analogous Art In Unwired Planet, LLC v. Google Inc., the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot. Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the ’205 patent”) owned by Unwired Planet, LLC. The ’205 patent describes a system and method for providing wireless network subscribers with prioritized search results based on the location of the mobile device. Claim 1... More
- PTAB May Institute an IPR Proceeding on a Subset of Challenged Claims The Federal Circuit recently denied a petition for rehearing en banc, effectively reiterating that the PTAB may, in its sole discretion, choose to institute an IPR proceeding on some, but not all, of the patent claims challenged in an IPR petition. The rehearing petition sought the full court’s review of a split three-judge panel decision in SAS Institute, Inc. v. Complementsoft, LLC, Nos. 2015-1346, -1347 (Fed. Cir. Jun. 10, 2016), that applied Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d... More