Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not […]
CAFC Vacates PTAB Decision Based on Claim Interpretation of “Aseptic”
By Peter Keros on May 12, 2017 in Broadest Reasonable Interpretation, Patent Claim Construction, Post-Grant Review
The Federal Circuit, in Nestle USA v. Steuben Foods, vacated a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) for an unreasonably broad interpretation of the term “aseptic.” Notably, where the patent refers to “FDA level of aseptic” for aseptic packaging, the proper interpretation should be focused on […]
Estoppel, or Lack Thereof, in Inter Partes Reexaminations
The Federal Circuit recently clarified the scope of estoppel for inter partes reexaminations, ruling in a pair of decisions that a district-court decision only estops arguments against individual claims of a patent and that a dismissal without prejudice does not estop the reexamination. In re Affinity Labs of Texas, 2016-1092, -1172, -1173 (Fed. Cir. May […]
What Facts Support Inequitable Conduct at the Patent Office?
Here is an interesting case addressing whether the affirmative defense of inequitable conduct was adequately plead as an affirmative defense in answer to a complaint for patent infringement. In Music Choice v. Stingray Digital Group Inc., 2-16-cv-00586 (E.D. Texas May 2, 2017), Magistrate Judge Payne recommended denying a motion to dismiss affirmative defenses and counterclaims […]
Functional Claiming Can Spell Patent-Eligibility Doom
Granting a Rule 12 motion to dismiss, a court held patent-ineligible, under the Alice abstract idea test and 35 U.S.C. § 101, a patent claim that recited “determining automatically an optimal exposure level.” SungKyunKwan University v. LMI Technologies USA Inc., Case No. 16-cv-06966-VC (N.D. Cal. May 3, 2017). Claim 1 of U.S. Patent No. 7,957,639 […]
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Markman Construction of “Controller” in the District of Delaware
The order for the Markman construction in Avid Technology, Inc. v. Harmonic Inc. (DED, Docket 12-627) was issued on May 2, 2017. The case involves U.S. Patent No. 5,495,291 titled “Decompression system for compressed video data for providing uninterrupted decompressed video data output.” The Court construed the term “controller” to mean “a component or subsystem […]
On-Sale Bar and the AIA: New Language, Same Meaning
Despite a change in statutory language, the applicability of the on-sale bar to pursuing patent rights under the America Invents Act (AIA) is unchanged from prior law, said the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. Here, the Federal Circuit held that the on-sale bar of the AIA applies to commercial […]
Court Construes “Coupled” and “Extending Continuously” in Markman
The terms “coupled” and “continuously” both find their way into mechanical patent claims, and often times have specific meanings intended by the drafter. The order for the Markman construction in Swimways Corp. v. Aqua-Leisure Industries (EDVA, Docket 2:16cv260) was issued on April 24, 2017 and gives an example of claim construction of these terms. With respect to “coupled,” the […]
Disclaimer Stops CBM Review for Electronic Billboard Patent
Here is another case showing how patent owners are effectively using statutory disclaimers to defend their patents at the PTAB – and showing that the USPTO’s Patent Trial and Appeal Board (PTAB) continues to decline to take an expansive view of what is a “covered business method patent.” In Broadside International LLC v. T-Rex Property […]
The Latest USPTO Patent-Eligibility Guidance (April 2017)
As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information. Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisions bearing on patent-eligibility analysis under 35 U.S.C. § 101 and the Mayo/Alice test. Other documents, if you haven’t already taken a look, […]