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William (Bill) J. Samore

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As an associate with the firm, Bill Samore focuses his practice on preparing and prosecuting U.S., foreign and international patents in numerous technical areas. His prosecution practice involves electrical, mechanical, software, artificial intelligence, telecommunications, blockchain technology, and other computer-related technologies. Bill is well-versed in the patent prosecution process including drafting and prosecuting patent applications. He has conducted numerous examination interviews at the United States Patent and Trademark Office. He has also worked with many inventors to protect their works. Read full bio here.

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In a decision that underscores the importance of prior art in the context of AI patents, the PTAB recently issued a final decision in Tesla, Inc. v. Autonomous Devices, LLC, IPR2023-01173 (PTAB January 3, 2025), invalidating all challenged claims of U.S. Patent Number 11,055,583 (the “’583 patent”).  The case provides some insight into how…

Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence

In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream’s claims, directed to publishing content on social networking websites, are unpatentable as obvious over a five-way combination of references. Important, in this appeal, was the subsidiary conclusion that one of the references – Anselm Bradford & Paul Haine, HTML5 Mastery: Semantics, Standards, and Styling (hereinafter “Bradford”) – qualified as prior art.  On appeal, VidStream did not challenge the PTAB’s determination of obviousness if Bradford qualified as a prior art reference.
Continue Reading Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence

In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo.  In particular, the court determined that Knip did not enable a skilled artisan to make the claimed invention.
Continue Reading Federal Circuit Finds Lack of Enablement in Prior Art Reference

In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101.  The PTAB had granted Maritz’s request to substitute amended claims, but the court reversed, concluding those claims also are ineligible under section 101.  
Continue Reading Federal Circuit Finds Loyalty Rewards Claims Ineligible

In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word “textile” in the preamble of both patents was not limiting (the term was limiting in one of the patents), the court concluded that this error did not affect the PTAB’s conclusions that all challenged claims were obvious.
Continue Reading Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.