PTABWatch Blog

http://www.ptabwatch.com/author/rphelan/

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

  • PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious Artificial Intelligence (AI) typically involves certain common aspects. This includes, for example, training data, AI training algorithm(s) that use the training data to train an AI model, and predictions and/or classifications as output from the trained AI model. Could a person of ordinary skill in the art (e.g., a computer scientist) find it obvious to combine these common aspects to arrive at any given AI-based invention? The Patent Trial and Appeal... More
  • Federal Circuit Reaffirms that Software is Patent Eligible In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” The relevant claims involved Bluetooth communications and, importantly, were directed to an improvement in network communications,... More
  • Highlights of the U.S. Patent Office’s Update to its 2019 Subject Matter Eligibility Guidance PTABWatch Takeaway: In mid-October 2019, the Patent Office updated its subject matter eligibility guidance published in January 2019. The update does not change the guidance, but simply offers clarifications invited by public responses to the January guidance. On October 17, 2019, the U.S. Patent and Trademark Office (USPTO) issued a 22-page an Update (“October PEG Update”) to its 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). The 2019 PEG, originally released on January 7, 2019, marked a shift in the... More
  • Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent eligibility guidance (PEG) regarding 35 U.S.C. § 101. While the decisions are not binding on future PTAB panels, the decisions provide useful insights into how the PTAB may approach issues of patent eligibility on ex parte appeal, and what type of claims are likely to be found patent-eligible. An overview of the PEG, including a description of how to analyze abstract... More
  • How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance   PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)’s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective, tool for demonstrating patent eligibility of software-related inventions. While the 2019 Guidance acts as persuasive authority only, the PTAB has relied on the 2019 Guidance as a rubric in numerous cases to analyze, and find patent eligible, software-related inventions. Practitioners and inventors seeking to overcome, or avoid, patent eligibility issues under Section 101 would do well to draft or... More
  • Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi One’s second petition for panel or en banc rehearing regarding 35 U.S.C. § 315 (b) time-bar challenges.  See Wi-Fi One, LLC v. Broadcom Corp., Case... More
  • The United States Can Have Standing in AIA Proceedings Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating the PTAB’s decision and remanding with instructions that the PTAB dismiss the CBM proceeding for lack of jurisdiction. PTABWatch Takeaway: When “sued for infringement” within the... More
  • How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and (3) the claim does not recite any function for the means term to perform. In Skky, Inv. v. MindGeek, SARL, Appeal 16-2018 (Fed. Cir. June 7,... More
  • Tech Industry Debates AIA Proceedings at Inaugural PTAB Conference Introduction of Panelists and summary of Session Early March 2017 kicked off the PTAB Bar Association’s Inaugural Conference in Washington, D.C.  I had the privilege of attending several sessions, one of which was “View from the Tech Industry,” which included panelists from the Tech Industry who commonly practice before the PTAB in either petitioner or patent owner roles. Representatives of Google and Microsoft presented petitioner views.  Representatives from Personalized Media Communications, LLC, and Trading Technologies International, Inc., presented patent owner views. The... More
  • Federal Circuit to take AIA Time Bar issue En Banc An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom... More
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