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

  • 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
  • AIA Estoppel – 7 Things We Know So Far When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up? The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that... 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
  • Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review On January 19, 2018, the Federal Circuit issued an order vacating the decision discussed in the post below and reinstating the appeal for reconsideration in view of the court’s en banc decision in Wi-Fi One LLC v. Broadcom Corporation, which we discuss here. A new decision on the merits may be expected later in 2018. In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies,... More
  • PTAB Upholds Claims Under Narrowed BRI Construction on Remand The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction. In addition, the PTAB’s related order (see Paper 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during... More