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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Patent Claims Directed to Providing an Intermediary Server in a Computer Network Survive Alice Scrutiny

For an example of a patent claim that survived a district court’s application of the Alice/Mayo patent-eligibility test, see independent claim 24 of US Patent No. 6,928,479. 01 Communique Laboratory, Inc. v. Citrix Systems, Inc., No. 1:06-cv-253 (N.D. Ohio Dec. 21, 2015.)  In this case, the court denied the defendant’s motion for summary judgment of […]

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Federal Circuit Demonstrates There Are Easy Cases under the Alice/Mayo Patent-Eligibility Test

The Federal Circuit has held patent-ineligible claims drawn to “the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.” Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA LLC, No. 2015-1411 (Fed. Cir., Dec. 28, 2015) (per curiam). If you read independent claims 8 and 16 […]

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Unreasonable Section 101 Arguments Support “Exceptional Case” Finding and Award of Attorney Fees Against Patent Plaintiff

Based on the plaintiff’s “unreasonable § 101 positions and vexatious litigation strategy,” Judge Gilstrap in the Eastern District of Texas found an exceptional case under 35 U.S.C. § 285, and granted a defense motion for attorney fees in eDekka LLC v. 3Balls.com, Inc., No. 2:15-CV-541 (E.D. Tex. December 17, 2015). At risk of overstating the […]

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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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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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