Archive | January, 2016

PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)

The USPTO’s Patent Trial and Appeal Board (PTAB) has denied a petition for Covered Business Method (CBM) Review of U.S. Patent No. 6,081,792, whose claims recite methods of “providing money or an item of value to an account-holder” and “paying on behalf of a person for money or an item of value, from an account […]

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Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show

We saw a lot of interesting technology – and, who knows, maybe some new intellectual property – at this year’s North American International Auto Show, the annual gathering of the automotive industry at Cobo Hall in downtown Detroit, a short distance from our office. As intellectual property attorneys we are always interested in new technology, so […]

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Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection of U.S. Patent No. 7,990,018, which is directed to a removable brush holder. The Federal Circuit vacated and remanded the decision back […]

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Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention is to show that a combination of references alleged by the patent examiner would render the prior art inoperable […]

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Section 101 Analysis Under Alice Reaches Different Results in Different Texas Districts

Courts in the Eastern and Western Districts of Texas have recently reached decisions that demonstrate the different results that different courts can reach when analyzing patent-eligibility under 35 U.S.C. § 101 in the wake of Alice Corp. v. CLS Bank. Summary judgement of invalidity under 35 U.S.C. 101 was denied on claims of U.S. 6,772,210 […]

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Some Guidance on Means-Plus-Function Language

Two recent district court opinions provide some guidance for predicting whether claim language will invoke a means-plus-function construction. Invoking means-plus-function isn’t as straight forward as it used to be. It’s well known that claiming “means for” is all but certain to invoke a means-plus-function construction. Things get trickier when that phrase is omitted, however. And […]

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PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on […]

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USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few […]

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Federal Circuit Demonstrates an Alice No-Brainer

In a one-word per curiam order two days after oral argument, the Federal Circuit affirmed, on grounds of patent-ineligibility under 35 U.S.C. § 101, the Rule 12(b)(6) dismissal of a lawsuit alleging infringement of patent claims directed to game scoring and processing Internet transactions. Priceplay.com, Inc. v. AOL Advertising, Inc., Nos. 2015-1492, 2015-1589, 2015-1660 (Fed. Cir. […]

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