The Patent Trial and Appeal Board (PTAB) of the USPTO recently reaffirmed a holding that its institution decisions regarding whether or not to proceed with an inter partes review (IPR) of an issued patent are "final and nonappealable" under 35 U.S.C. § 314(d).  In this case, Medtronic, Inc. v. Robert Bosch Healthcare Sys. Inc., Fed. Cir. No. 2015-1977 (10/20/2016), the PTAB terminated an IPR because the petitioner failed to disclose all real parties in interest, which is subject to a ban on judicial review in accordance with 314(d).  

The Federal Circuit, this Friday, reversed a distrcit court's summary judgment that several patents related to VoIP technology were invalid as being indefinite under 35 U.S.C. 112. In its holding, the court concluded that Section 112 cannot be used on the basis that a "processing system" is indefinite, wherein the asserted claims comprise entirely of method claims. In other words, because the "processing system" has no discernable role in defining the scope of a claim of process, and wherein the point of novelty resides in the steps of the process or method, the unfleshed "processing system" does not render the method claims indefinite per se.

Tuesday, 23 June 2015 14:10

Supreme Court Upholds Brulotte

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Following our previous post on Kimble v. Marvel Entertainment, LLC, the Supreme Court today has decided to uphold the longstanding rule in Brulotte v. Thys, which states that a patentee cannot continue to receive royalties for sales made after the expiration of the patent. Standing by the principle of stare decisis, the Court reasoned that in case after case, it construed 35 USC 154 to preclude measures that restrict free access to formerly patented inventions.

Thursday, 05 May 2016 12:48

USPTO Issues 2016 Guidance on Patent Eligibility

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Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon".  This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).  

Wednesday, 28 September 2016 12:46

USPTO Issues Revisions to PTAB Post Grant Procedure

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Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750. This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings.

In the unending saga of Samsung v. Apple (and Apple v. Samsung), the Supreme Court has recently granted certiorari on a single question relating to damages in a case of design patent infringement, that is: where a design patent only covers a single component of an overall product, should a damages award be limited only to those profits attributed to that component?  For more on this case, head over to SCOTUSblog -

In an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151). Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant. After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.

In the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit's most recent decision invalidated two of Apple's asserted patents, notwithstanding a jury verdict finding the opposite. The two claims were directed to Apple's mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages). The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the "slide-to-unlock" and "spell correction" claims were obvious in view of the prior art. In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious. The Federal Circuit reviewed Apple's presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court's jury verdict.

In a recent decision in Lumen View v. FindTheBest.Com, the Federal Circuit held that Section 285 of U.S. patent laws does not support the deterrence based award of fees or sanctions, instead the Federal Circuit suggested that sanctions under Rule 11 of the FRCP to be the more appropriate vehicle. The Federal Circuit in this case did affirm the lower court's "exceptional case" finding under 35 U.S.C. 285 as well as the award of "reasonable attorney fees", but has vacated the doubling of the award to "deter baseless litigation" as unjustifiable.

The Supreme Court has granted writ of certiorari in a pending Inter Partes Review (IPR) challenge in Cuozzo Speed Tech v. Lee.  The questions on review relate to whether the court of appeals erred in holding that in IPR proceedings, the PTAB may construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning, as well as on whether the PTAB's decision to institute an IPR proceeding is itself unreviewable.

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