Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.” The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.
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PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner
The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). The order is significant because it offers guidance on how the PTAB interprets this provision and applies it to decide whether a petitioner “reasonably could have raised” a patentability challenge clarified by a Supreme Court decision that was not available during an earlier CBM proceeding involving the same parties, the same patent, and the same claims.
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Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM
In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action. In its appeal brief, Apple argues that it was unfairly denied a stay that was granted to other parties facing litigation on the same patents who have yet to proceed to trial.
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PTAB Cancels Metasearch Patents Under Section 101, Rejecting Arguments
On May 22, 2015, the PTAB issued its final written decision in American Express Co. v. Lunenfeld, CBM2014-00050 (Paper 51), canceling six claims of U.S. Patent No. 8,239,451 directed to online metasearching. The PTAB decided that all six claims are unpatentable under 35 USC § 101, and obvious under 35 USC § 103. The PTAB characterized the ‘452 Patent as directed to the abstract idea of searching for travel information from multiple sources and ordering travel items from the combined search results.
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