Archive | December, 2015

Federal Circuit Affirms PTAB’s CBM Determinations

The PTAB was not arbitrary and capricious in determining that patent claims directed to transmitting digital data were Covered Business Method (CBM) claims, despite a seeming recitation of technological elements, and an omission of any explicit recitation of a financial element.  SightSound Technologies v. Apple, Inc., No.s 2015-1159, 2015-1160 (Fed. Cir. Dec. 15, 2015).  Although […]

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USPTO Notice of Allowance Post-Alice Does Not Prevent Finding of Patent-Ineligibility in District Court

In holding claims directed to a computer search system patent-ineligible under 35 U.S.C. § 101, Delaware Magistrate Judge Thynge rejected an argument that the patent should survive Alice scrutiny because a very similar continuation application had been allowed after Alice, and after invalidity contentions were submitted to the USPTO in the continuation application. Collarity, Inc. […]

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PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpretation.” Moreover, the case shows applicants that, contrary to examiners’ admonitions that the specification will not be read into the claims, clear […]

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Different Patent Claim Terms Can Have Same Meaning

Courts will presume different meanings attach to different words when construing claim language. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s ruling that a “pusher assembly” and a “pusher bar” have the same meaning). But a recent Patent Trial and Appeal Board decision construed […]

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Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board

A recent decision from the Patent Trial and Appeal Board (PTAB) provides a lesson in avoiding indefiniteness under 35 U.S.C. § 112(b). In In re Hyde, Appeal 2013-003305, Application 12/387,151 (PTAB Nov. 4, 2015), the Applicant appealed prior art rejections under 35 U.S.C. §§ 102(b) and 103 only to have these grounds of rejection mooted […]

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