Subscribe to all posts by Ryan N. Phelan

PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

By Ryan N. Phelan on Posted in Artificial Intelligence, Inter Partes Review, IPR, Machine Learning, Obviousness
Artificial Intelligence (AI) typically involves certain common aspects. This includes, for example, training data, AI training algorithm(s) that use the training data to train an AI model, and predictions and/or classifications as output from the trained AI model. Could a person of ordinary skill in the art (e.g., a computer scientist) find it obvious to … Continue Reading

Federal Circuit Reaffirms that Software is Patent Eligible

By Ryan N. Phelan on Posted in Appeals, Section 101
In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to … Continue Reading

Highlights of the U.S. Patent Office’s Update to its 2019 Subject Matter Eligibility Guidance

By Ryan N. Phelan on Posted in Section 101
PTABWatch Takeaway: In mid-October 2019, the Patent Office updated its subject matter eligibility guidance published in January 2019. The update does not change the guidance, but simply offers clarifications invited by public responses to the January guidance. On October 17, 2019, the U.S. Patent and Trademark Office (USPTO) issued a 22-page an Update (“October PEG … Continue Reading

Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines

By Ryan N. Phelan on Posted in Section 101
PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent eligibility guidance (PEG) regarding 35 U.S.C. § 101. While the decisions are not binding on future PTAB panels, the decisions provide useful insights into how the PTAB may approach issues of patent eligibility on ex … Continue Reading

How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance

By Ryan N. Phelan on Posted in Section 101
  PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)’s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective, tool for demonstrating patent eligibility of software-related inventions. While the 2019 Guidance acts as persuasive authority only, the PTAB has relied on the 2019 Guidance as a rubric in numerous cases to analyze, … Continue Reading

Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi … Continue Reading

The United States Can Have Standing in AIA Proceedings

By Ryan N. Phelan on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Section 101, Trial Procedures
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Section 112
PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading

Tech Industry Debates AIA Proceedings at Inaugural PTAB Conference

By Ryan N. Phelan on Posted in Inter Partes Review
Introduction of Panelists and summary of Session Early March 2017 kicked off the PTAB Bar Association’s Inaugural Conference in Washington, D.C.  I had the privilege of attending several sessions, one of which was “View from the Tech Industry,” which included panelists from the Tech Industry who commonly practice before the PTAB in either petitioner or … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, Legislation, Trial Procedures
An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) … Continue Reading

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Legislation, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

PTAB Upholds Claims Under Narrowed BRI Construction on Remand

By Ryan N. Phelan on Posted in Claim Construction, Inter Partes Review
The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction. In addition, the PTAB’s related order (see Paper … Continue Reading

PTAB’s Decision on Remand in Dell v. Acceleron Shows Strict treatment of Post-Petition Arguments

By Ryan N. Phelan on Posted in Inter Partes Review
The PTAB’s August 22, 2016, decision in IPR2013-00440 on remand from the Federal Circuit, Dell, Inc. v. Acceleron, LLC,¹ sheds light on how the PTAB may treat seemingly new or different arguments raised post-petition.  After Dell, and as discussed below, practitioners may expect the PTAB to exercise a greater degree of scrutiny when considering arguments that … Continue Reading
LexBlog