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 Upholds Patent Ineligibility of Dice Game The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea of rules for playing a dice game. Finding that the recited elements did not amount to significantly more than that abstract idea itself, the court found the claims ineligible for patent protection. Appellant Marco Guldenaar Holding B.V. appealed a PTAB decision holding the claims of U.S. Patent Application No. 13/078,196 (the ’196 application) ineligible under... More
- Federal Circuit Remands PTAB Decision to Assess Dependent Claim Patentability In MaxLinear Inc. v. CF Crespe LLC the Federal Circuit ruled that the PTAB did not address arguments concerning patentability of certain dependent claims of the patent at issue separate from the corresponding independent claims, and vacated and remanded the PTAB’s final written decision. MaxLinear initially petitioned the PTAB for an inter partes review of U.S. Patent No. 7,075,585 (“the ’585 patent”), assigned to Crespe and directed to a broadband television signal receiver that includes a multi-standard channel filter. The PTAB instituted... More
- 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 An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All 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.... More