Archive | Section 102 and 103 Invalidity

PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The […]

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Usenet Post Qualifies as “Printed Publication” Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392 (Fed. Cir. May 27, 2014).  This holding was one of the bases on which the Federal Circuit […]

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When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014).  In this case, a divided Federal Circuit panel upheld […]

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Evidence Not Required to Rebut Presumption That Anticipatory Prior Art Is Enabled

The Federal Circuit has clarified a patent applicant’s burden to rebut the presumption that a prior art reference is enabling of allegedly anticipated claims. In re Morsa, No. 2012-1609 (Fed. Cir. April 5, 2013). The court therefore vacated and remanded a decision from the Board of Patent Appeals and Interferences, where the Board had affirmed […]

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Federal Circuit Holds E-Commerce Claims Obvious

The Federal Circuit has held claims of three e-commerce patents invalid on grounds of obviousness. Soverain Software, LLC v. Newegg, Inc., No. 2011-1009 (Fed. Cir. Jan 22, 2013). The court, in an opinion authored by Judge Newman, reversed the holding of the U.S. District Court for the Eastern District of Texas that claims of United States […]

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Unindexed Internet Content Can Be a “Printed Publication” under 35 U.S.C. § 102(b)

Unindexed Internet content can be a “printed publication” under 35 U.S.C. § 102(b), the Federal Circuit has held.  Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2011-1559, 2012-1016 (Fed. Cir. Nov. 5, 2012). Claim 49 of U.S. Reissue Patent RE40,449 recited “[a] method of voting providing for self-verification of a ballot.” The District Court […]

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What is the Pleading Standard for Invalidity Counterclaims?

Bare-bones counterclaims alleging invalidity of patents-in-suit were held sufficient to survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6) and 8(a).  Helferich Patent Licensing, LLC v. J.C. Penney Corporation, Inc., No. 11 CV 9143 (N.D. Ill. Aug. 28, 2012).  J.C. Penney had pled six nearly identical invalidity counterclaims.  Helferich, the plaintiff, “argue[d] J.C. […]

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Prior Art Publications Are Presumed to Be Enabling

The presumption that a prior art reference is enabled applies to printed publications in addition to patents, the Federal Circuit has explained in In re Antor Media Corp., No. 2011-1465 (Fed. Cir. July 27, 2012).  Further, the Federal Circuit affirmed the Board of Patent Appeals and Interferences and upheld rejections issued in a re-examination of […]

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