Posts Tagged: "PTAB"

In the recent case of Intellectual Ventures v. Toshiba, Judge Robinson noted that “the Federal Circuit has construed the language quite literally” in the use of the word “during.” The term is spelled out as “any ground that the petitioner raised or reasonable could have raised during that inter partes review” in § 315(e)(1). The judge noted that while extending the logic of non-instituted grounds as not being able to be raised “during” an IPR proceeding to prior art references that were never presented to the Patent Trial and Appeal Board at all “confounds the very nature of this parallel administrative proceeding, the court cannot divine a way around the Federal Circuit’s interpretation in Shaw.” Thus, she did not estop Toshiba from presenting the grounds never presented to the PTAB in a pair of orders in December and January, and heavily implied that the Federal Circuit should weigh in to clarify the issue.

The CBM determination includes patents that are “financial in nature” according to the claims; not patents that are “complementary” or “incidental” to financial activity according to the specification or post-grant assertion of the patent… Further, the Board’s reliance on post-grant activity, that Secure Axcess alleged infringement against financial institutions, was improper. “Those choices do not necessarily define a patent as a CBM patent, nor even necessarily illuminate an understanding of the invention as claimed.”

Reliance on expert declarations is not per se deficient because the declaration utilizes a legal turn-of-phrase, i.e. “It would have been obvious.” The declaration is sufficient, and reliance is not an error if the declaration incorporates factual determinations that support its legal conclusions….Strava sought Inter Partes Reexamination of several claims of a patent owned by Icon. During reexamination, the Examiner rejected all pending claims as obvious. Icon appealed the Examiner’s findings and the Board affirmed. Icon appealed to the Court and challenged the Board’s reliance on Strava’s expert declarations as improper and its decision as lacking substantial evidence.

When applying that definition to the present case, the majority opinion rejected as too limiting Secure Axcess’s proposal that CBM review should be limited to “products and services such as credit, loans, real estate transactions, securities and investment products, and similar financial products and services”. However, the Federal Circuit also rejected the Board’s much more expansive approach that CBM review should apply to financial products or services that were merely “used in” and “incidental to” a financial activity… In dissent, Judge Lourie disagreed with the majority’s holding on the basis of Secure Axcess’s claims being “surely claims to ‘a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.’” This, he argued, was because “[t]here can be little doubt that such claims meet the ‘method or apparatus for performing data processing’ limitation of the statute.”

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the USPTO… This dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). There are three questions presented by Oil States in the petition for writ of certiorari… Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment, which is simply a one-word judgment that says “Affirmed” without any explanation.

Wi-Fi One stands among the latest—and potentially the most important—in a series of cases that have called into question both the degree to which Congress intended to restrict the authority of federal courts to review certain decisions made by the Patent Trial and Appeal Board (PTAB) and the limits on Congress’s power to actually do so. While it remains to be seen how the en banc Federal Circuit will ultimately rule, the answer to its question will inevitably have a broad and deep impact on future inter partes review and other post-grant proceedings, Patent Office procedures, and beyond.

The PTAB agreed with Apple and invalidated the patent. The Federal Circuit remanded because the Board failed to adequately explain its finding that a skilled artisan would have had a motivation to combine the references used to find obviousness… IPR practitioners should brief the Board with explicit reasoning why a skilled artisan not only could (or could not), but would (or would not) be motivated to combine the asserted references, and how those references work together (or do not).

One Administrative Patent Judge — Judge Meredith Petravick — dissented. Petravick said it was inappropriate for the PTAB to terminate the ‘304 patent CBM because the parties were different when compared to the Federal Circuit case. Petravick said that the review should be limited to the record of the ‘304 patent and not consider extraneous, out of record matters such as a Federal Circuit determination that the very same claims are, in fact, patent eligible. Petravick dissented saying that he would find the claims to the graphical user interface just found patent eligible by the Federal Circuit to be patent ineligible.

The patent troll problem has always been a creation of large operating companies. They obtained dubious, highly questionable patents. These low quality patents were then sold to other entities so they could specifically and intentionally be used to sue other large operating companies… Post grant challenges were created in the AIA for the express purpose of getting rid of these low quality patents. The large operating companies that so desperately lobbied for new procedures to challenge these low quality patents instead continue to pay extortion-like settlements to patent trolls who apparently continue to sue alleging infringement of low quality patents.

While we have damaged our patent system, China has strengthened theirs. Job creation is stagnant, economic growth is anemic and the America Dream is dying. Congress must act to correct this damage and fix the patent system… The PTAB must be eliminated because no matter what changes are made to the rules it is difficult to see how this Board could ever be reigned in after starting and existing for the purpose of killing patents. Just changing the rules will not fix its systemic problems nor create a fairer process for patent owners.

If the Eastern District of Virginia can dispatch patent cases in less time than the PTAB, why should we suffer the indignity of the lack of due process and constitutional infirmity of an Article II tribunal striping vested property rights without much, if any, real oversight by an independent judiciary?

Dutch tech conglomerate Koninklijke Philips NV is the owner of U.S. Patent No. 6,522,695. The Philips patent is challenged by Microsoft on behalf of several other tech giants… At the center of the proceedings is a challenge to the validity of a patent covering a technology that enables more information to be stored on an optical or magnetic recording medium… The official petition filed by Microsoft is the result of a series of seven lawsuits filed by Philips in December 2015 in which it attempted to assert the ‘695 against a series of tech developers. According to Microsoft’s IPR, the American tech firm has intervened in five of these cases, including suits against Acer and ASUSTEK, by filing as a counterclaim-defendant.

Patent system savvy corporations are ganging up on a smaller developer within the nascent automotive software industry who had the temerity to assert a patent covering a technology it developed in-house… The IPR challenges the validity of a patent owned by InfoGation Corporation, Inc., of San Diego, CA, a designer and developer of navigation software for the automotive industry, which was founded in 1996… The filing of the Google IPR is a direct consequence of Infogation filing suit against HTC, ZTE and Huawei last July, each of which alleged infringement of the ‘743 patent.

The Federal Circuit upheld the decision of the Patent Trial and Appeal Board (“Board”), on Inter Partes Review, to invalidate as anticipated or obvious all claims of a patent owned by MPHJ Technology Investments. MPHJ’s patent describes a system and method for scanning a physical document and “replicat[ing it] into other devices or applications or the internet,” for instance, by email.

The PTAB concluded: “Based on our determination that the preponderance of the evidence shows there is no interference-in-fact between the parties’ claims, we need not decide the other pending motions.”… Yesterday the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued a decision in the CRISPR patent interference pending between The Broad Institute, Inc. (the Junior Party; second filer) and The Regents of the University of California (the Senior Party; first filer)… This ruling is a victory for The Broad Institute, who had filed a motion arguing that the interference should never have been declared because there is no intereference-in-fact between the claims being made by the parties.