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Designating Specific Storage Location for Ad Data Not Enough for Patentability

By Tiffany D. Gehrke on Posted in CBM, Covered Business Method, Section 101
In Customedia Techs. v. Dish Network Corp., No. 18-2239, the Federal Circuit affirmed a pair of PTAB judgments in CBM reviews canceling claims directed to the use of “a computer to deliver targeted advertising to a user” as ineligible under 35 U.S.C. § 101. More specifically, the claims recite reserving memory for advertising data in … Continue Reading

Collateral Estoppel Not Limited to Identical Claims

By Tiffany D. Gehrke on Posted in Appeals
The equitable doctrine of collateral estoppel protects a party from having to re-litigate an issue that has already been fully and fairly adjudicated. In Nestlé USA, Inc. v. Steuben Foods, Inc. the Federal Circuit said that application of collateral estoppel is not limited to construing only identical patent claims; but instead, it extends to terms … Continue Reading

CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element

By Tiffany D. Gehrke on Posted in Appeals, CBM
Update: The Federal Circuit’s decision in this case was vacated as moot, on the basis that the challenged claims had been canceled in a separate IPR proceeding. PNC Bank Nat’l Assoc. v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018). A patent that is merely incidental to a financial activity is not sufficient to render that … Continue Reading

APA Requires Notice of and Opportunity to Respond to Grounds for Cancellation

By Tiffany D. Gehrke on Posted in Inter Partes Review
Notice of grounds for unpatentability in one proceeding does not provide notice in a second, related proceeding, even where the proceedings relate to the same patent, are between the same two parties, and include the same prior art reference. The Federal Circuit, in In re: NuVasive, Inc., Case Nos. 2015-1672 and 2015-1673 (Fed. Cir. Nov. … Continue Reading

Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

By Tiffany D. Gehrke on Posted in Appeals, Claim Construction
The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that … Continue Reading

PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish

By Tiffany D. Gehrke on Posted in Covered Business Method, Section 101
Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for … Continue Reading

Board Need Not Consider Arguments Beyond Those Actually Raised By Patentee In Motion To Amend

By Tiffany D. Gehrke on Posted in Amendments, Appeals, Sections 102/103
An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims? The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend … Continue Reading

District Court Interprets IPR Estoppel Provision to Permit Reliance on Cumulative Prior Art Not Reasonably Available in IPR Proceeding

By Tiffany D. Gehrke on Posted in Inter Partes Review, Sections 102/103
In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have … Continue Reading

Federal Circuit Confirms Board Can “Pick and Choose” Among Claims in Its Decision to Institute IPR

By Tiffany D. Gehrke on Posted in Appeals, Inter Partes Review
In Synopsys, Inc. v. Mentor Graphics Corporation, Appeal Nos. 2014-1516, 2015-1530 (Fed. Cir. Feb. 10, 2016), the Federal Circuit affirmed the PTAB’s judgment that two of the challenged claims were not invalid as anticipated.  The court also held that (1) the final order of the Board need not address every claim raised in the petition … Continue Reading

Dissent: “Deferential review by the Federal Circuit falls short of the legislative purpose of providing optimum determination of patent validity.”

By Tiffany D. Gehrke on Posted in Appeals, Inter Partes Review, Legislation, Sections 102/103
In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness.  … Continue Reading

Secondary Considerations Finally Found to be Persuasive

By Tiffany D. Gehrke on Posted in Inter Partes Review, Sections 102/103
In what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding.  In Phigenix, Inc. v. Immunogen, Inc., the Board issued its final written decision and held that each of the eight challenged claims were not unpatentable, finding the … Continue Reading

Petitioner Must Prove Reference Art Entitled to Filing Date of its Provisional Application.

By Tiffany D. Gehrke on Posted in Appeals, Sections 102/103
When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date … Continue Reading

PTAB Grants Request for Rehearing on Decision to Institute

By Tiffany D. Gehrke on Posted in Inter Partes Review
In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim.  That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163.  Decision on Institution (Paper 18, “Orig. Dec.”); Request … Continue Reading
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