PTAB Panel Can’t Agree on Patent-Eligibility

Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-006905, Application 13/241,673 (PTAB April 3, 2017).  The claims at issue were directed to data processing software patents, specifically to an […]

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Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way of background, this type of argument, including caselaw, is outlined in MPEP §2143.01 IV. Of the 41 recent decisions, only […]

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E.D. Texas: Digital Product Licensing Not Patent-Eligible

Patent claims directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license” are not patent-eligible, says Judge Robert W. Schroeder of the Eastern District of Texas.  Uniloc, USA, Inc. v.  Amazon.com, Inc., Civil Action No. 2:16-CV-00570-RWS (Lead) (E.D. Texas, March 20, 2017).  Thus, Judge Schroeder granted a […]

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Alice Changed Law, No Issue Preclusion on Patent-Eligibility

Where a patent had survived a challenge under 35 U.S.C. § 101 in prior litigation between the parties, issue preclusion did not prevent a court from revisiting the question, and invalidating the patent claims, because, the court said, Alice Corp. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), represented a change in the law.  […]

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PTAB Unpersuaded by Evidence of Commercial Success

The burden on an Appellant is seemingly high when arguing commercial success as a secondary consideration of nonobviousness in an ex parte PTAB appeal.  The decision in Ex parte Thatcher, Appeal No. 2015-002163 (April 4, 2017) is an example of the PTAB remaining unpersuaded by arguments of commercial success. The patent application at issue claims […]

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Online Listing = Offer for Sale for Patent Infringement?

Robert Blazer sued eBay alleging that a product listed by an eBay seller was liable for patent infringement (directly, contributorily, and by inducement).  eBay successfully moved for summary judgment on the ground that it had not offered the accused product for sale, as required to maintain an action for patent infringement under 35 U.S.C. § 271(a).  […]

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Patent-Eligibility Is Foggier after Enfish: an Illustration

Patent claims to “[a] method for defining a personalized printed product using a data template that consists of at least one graphical component” are not directed to an abstract idea, and thus should survive a motion to dismiss based on an allegation of patent-ineligible subject matter, says an Eastern District of Texas magistrate judge.  Opal […]

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Unsupportable Claim Construction Warrants 12(b)(6) Dismissal

Where the plaintiff could only rely on a construction of a patent claim term that was implausible, a magistrate judge recommended dismissal of the plaintiff’s complaint under FRCP 12(b)(6).  Bartonfalls, LLC v. Turner Broadcasting Systems, Inc., Case No. 2:16-cv-1127-JRG-RSP (E.D. Texas, March 15, 2017).  Claims of U.S. Patent Nos. 7,917,922 and 8,769,561 recited a “TV […]

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Copyrightability Clarified for Designs of “Useful” Articles

On March 22, 2017, the U.S. Supreme Court decided Star Athletica, L.L.C. v. Varsity Brands, Inc., ruling that decorative designs of cheerleading uniforms may be eligible for copyright protection.[1]  In so deciding, the Court clarified the application of the copyright laws to designs of “useful” articles. Previously, as has been my experience in the registration […]

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