PTABWatch Blog
http://www.ptabwatch.com/author/bsamore/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
- Fed. Cir. Provides Insight on Conditional Features In Sierra Wireless v. Sisvel S.P.A., Appeals 2023-1059, -1085, -1089, -1125 (Fed. Cir. Mar. 10, 2025), the Federal Circuit vacated and remanded a PTAB decision that had found claims 1, 2, and 6-8 of U.S. Patent No. 7,869,396 (“the ’396 patent”) obvious. In particular, the Federal Circuit found that the features in claim 1 of the ’396 patent were not conditional, and gave them patentable weight. Claim 1 of the’396 patent recites a variation of an automatic repeat request (ARQ), in... More
- PTAB Provides Some Clarity on Artificial Intelligence (AI) Obviousness in IPR Decision In a decision that underscores the importance of prior art in the context of AI patents, the PTAB recently issued a final decision in Tesla, Inc. v. Autonomous Devices, LLC, IPR2023-01173 (PTAB January 3, 2025), invalidating all challenged claims of U.S. Patent Number 11,055,583 (the “’583 patent”). The case provides some insight into how the PTAB evaluates obviousness in AI patents. Broadly speaking, the ’583 patent relates to “artificially intelligent devices, systems, and methods for learning and/or using visual surrounding for... More
- Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream’s claims, directed to publishing content on social networking websites, are unpatentable as obvious over a five-way combination of references. Important, in this appeal, was the subsidiary conclusion that one of the references – Anselm Bradford & Paul Haine, HTML5 Mastery: Semantics, Standards, and Styling (hereinafter “Bradford”) – qualified as prior art. ... More
- Federal Circuit Finds Lack of Enablement in Prior Art Reference In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo. In particular, the court determined that Knip did not enable a skilled artisan to make the claimed invention. The Raytheon patent generally claims a gas turbine engine having, among other things, “a power density at Sea... More
- Federal Circuit Finds Loyalty Rewards Claims Ineligible In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101. The PTAB had granted Maritz’s request to substitute amended claims, but the court reversed, concluding those claims also are ineligible under section 101. Customer loyalty programs were known before... More
- Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word “textile” in the preamble of both patents was not limiting (the term was limiting in one of the patents), the court concluded that this error... More