Subscribe to all posts by Matthew R. Carey

Federal Circuit Upholds Patent Ineligibility of Dice Game

By Matthew R. Carey on July 22, 2019 Posted in Appeals, Section 101

The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea of rules for playing a dice game.  Finding that the recited elements did not amount to significantly more than that abstract idea itself, the court found the claims ineligible for … Continue Reading

Federal Circuit Remands PTAB Decision to Assess Dependent Claim Patentability

By Matthew R. Carey on May 3, 2018 Posted in Appeals, Inter Partes Review, Sections 102/103

In MaxLinear Inc. v. CF Crespe LLC the Federal Circuit ruled that the PTAB did not address arguments concerning patentability of certain dependent claims of the patent at issue separate from the corresponding independent claims, and vacated and remanded the PTAB’s final written decision.… Continue Reading

Federal Circuit Overturns PTAB’s Finding of Patent Validity

By Matthew R. Carey on October 13, 2017 Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103

In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland … Continue Reading

Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver

By Matthew R. Carey on May 2, 2017 Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103

In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB. SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. … Continue Reading

Federal Circuit Affirms Cancellation of Claims Based on Analogous Art

By Matthew R. Carey on February 24, 2017 Posted in Appeals, Inter Partes Review, IPR, Sections 102/103

In Unwired Planet, LLC v. Google Inc., the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot. Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the  ’205 patent”) owned by Unwired Planet, LLC.  The … Continue Reading

PTAB May Institute an IPR Proceeding on a Subset of Challenged Claims

By Matthew R. Carey on December 2, 2016 Posted in Claim Construction, Institution / Denial, Inter Partes Review, IPR

An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Federal Circuit recently denied a petition for rehearing en banc, effectively reiterating that the PTAB may, in its sole discretion, choose to institute an IPR proceeding on some, but not all, of the … Continue Reading