Archive | America Invents Act

Lessons from the USPTO’s Patent Quality Symposium

The USPTO is working in a number of ways to emphasize clarity in patent prosecution.  That is the clear theme emerging from the USPTO’s Patent Quality Symposium, which I attended in Alexandria on April 27, 2016.  In listening to the various presentations, I was struck that this emphasis – on clarity of the record and […]

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Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?

Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTAB).  In a Covered Business Method (CBM) review Final Written Decision, the PTAB held that claims of U.S. Patent No. 8,402,281, […]

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Patent Claims to Collecting Website Feedback Not a “Financial Product or Service,” Do Not Qualify for CBM Review, Says PTAB

Patent claims reciting subject matter that, among other applications, could be used in the financial industry, do not qualify for Covered Business Method (CBM) review, said the USPTO’s Patent Trial and Appeal Board in Qualtrics, LLC v. OpinionLab, Inc., Case CBM2016-00003 (PTAB April 13, 2016).  Claims of U.S. Patent No. 8,041,805 were directed to collecting […]

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Ho-Hum – Federal Circuit Affirms PTAB Decision that Claims Directed to Securities Trading System Are Not Patent-Eligible

In a one-word per curiam order, the Federal Circuit has affirmed the Patent Trial and Appeal Board’s holding that patent claims directed to a securities trading system are invalid under 35 U.S.C. § 101.  Chicago Board Options Exchange Inc. v. International Securities Exchange LLC, 2015-1728, 2015-1729, 2015-1730 (Fed. Cir. March 25, 2016). Here are links […]

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Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

In Square Inc v. Protegrity Corp., CBM2014-00182 (March 2, 2016), the Patent Trial and Appeal Board (PTAB) offered some insight as to when patent claims will be subject to covered business method (CBM) review. The patent at issue is US 8,402,281, titled “Data Security System for a Database.” Claim 33 was one of the illustrative […]

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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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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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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 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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