Posts in Courts

PTAB Judges Should Call Balls and Strikes, Not Throw Curve Balls

The America Invents Act (AIA) outlines an adversarial, inter partes, process for reviewing patents and determining their validity. Patent owners deserve a fair process, presided over by entirely neutral decision makers. But AIA trials are corrupted when judges at the Patent Trial and Appeal Board (PTAB) expand the trial proceedings to address invalidity grounds beyond those asserted in the IPR petition. When considering whether appellate review is available to prevent the PTAB from invalidating patent claims based on grounds not asserted in the petition, however, different Federal Circuit panels have arrived at different outcomes.

Patent Filings Roundup: Blackberry Accused of Abuse, PayPal Isn’t Playing, WSOU Earns Its Frequent Filer Card

This week, Patent Trial and Appeal Board (PTAB) filings are back up, with four post grant reviews (PGRs) and 37 inter partes reviews (IPRs), while there were 83 district court complaints; the district court numbers skew high because of the WSOU entities’ proclivity for filing dozens of independent complaints per defendant, as discussed below. This week saw a major suit from PayPal against an online coupon competitor, allegations of abusive demand letter practices by BlackBerry, and even what appears to be a Matrix-themed gag filing in Delaware. Lockdown doesn’t seem to have slowed down suits in the slightest, despite what has been happening in other industries; only time will tell how earnings reports and market dips affect the patent marketplace longterm, though if history is any guide, litigation and patent assertion will likely rise in a recession economy.

Booking.com Oral Arguments: Will Justices’ Skepticism of USPTO Arguments Trump Monopoly Concerns?

The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.

Federal Circuit Holds Banks to Be ‘Persons’ Under the America Invents Act

Recently, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board, holding that the Board correctly determined that the claims 21–24 of U.S. Patent No. 6,754,640 (’640 patent) and claims 1-20 of U.S. Patent 8,768,840 (’840 patent), both owned by Bozeman Financial LLC (Bozeman), are directed to patent ineligible subject matter under 35 U.S.C. § 101. To reach this decision, the Federal Circuit first determined the appellees, all 12 of the United States Federal Reserve Banks (Banks), to be “persons” under the America Invents Act (AIA) and, therefore, eligible to petition for post-issuance review under the AIA. See Bozeman Fin. LLC v. Federal Reserve Bank of Atlanta, No. 2019-1018, 2020 U.S. App. LEXIS 11315 (Fed. Cir. April 10, 2020) (Before Lourie, Dyk, and Moore, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge).  

Uniloc Patent Claims Vindicated Under Alice at Federal Circuit

Yesterday, the U.S. Court of Appeals for the Federal Circuit, in an opinion authored by Judge Moore, reversed and remanded a decision of the U.S. District Court for the Northern District of California, which had found that certain claims of Uniloc’s U.S. Patent No. 6,993,049 were ineligible under Section 101 as being directed to an abstract idea. The Federal Circuit disagreed, holding that the claims at issue were directed to a “patent-eligible improvement to computer functionality.”

The Long Reach of the Mathematics Patentability Exception is Overbroad and Absurd – Part II

In Part I of this series we examined the mathematics exception to patentability and the historical underpinnings of its justification. In Part II, we will continue to examine the case history around patenting of mathematic principles.