On May 27, 2015, the Board issued a final written decision in Organik Kimya AS v. Rohm & Hass Co., IPR2014-00185, confirming the patentability of all challenged claims of U.S. Patent No. 6,020,435.

The ‘435 patent is directed to a chemical process for preparing low-density “hollow” or “voided” multi-stage emulsion polymers used in coating compositions such as paints. These emulsion polymers are generally prepared by swelling a core/shell emulsion polymer in such a way that one or more voids form in the interior of the emulsion polymer particle.
Continue Reading PTAB Upholds Claims Directed to Chemical Process Based on Expert Testimony and Experimental Evidence

The transitional program for covered business method (CBM) patents is a review proceeding administered by the Patent Trial and Appeal Board to reconsider the patentability of one or more claims in a CBM patent. Uphill BattlePetitioners seeking CBM review have enjoyed good success in knocking out claims for reciting subject matter ineligible for a patent. They have not, however, enjoyed similar success when challenging claims under 35 USC § 112 (concerning clarity, enablement, or written description).
Continue Reading Petitioners Are Not Faring Well on 112-challenges in CBM Review

On May 22, 2015, the Board granted Petitioners Motion for Joinder in Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. v. Innovative Display Technologies, LLC, IPR2015-00360. Mercedes-Benz sought to join its proceeding with LG Display Co., Ltd. v. Innovative Display Technologies, LLC, IPR2015-00360, which was instituted on January 13, 2015. Mercedes-Benz filed its petition approximately one month before the LG IPR was instituted. Both proceedings seek to invalidate claims of U.S. Patent No. 7,300,194 (“the ‘194 patent”) on identical grounds.
Continue Reading PTAB Grants Joinder of Proceedings Raising Identical Challenges

Light BulbOn May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (“the ’561 patent”).¹ The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the ’561 patent’s claimed invention and, more particularly, the art was not reasonably pertinent to all the problems the inventor faced. 
Continue Reading Prior Art Must be Analogous to the Entire Scope of Problem

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.
Continue Reading PTAB Cancels Metasearch Patents Under Section 101, Rejecting Arguments

The PTAB’s final written decision in Butamax Advanced Biofuels LLC v. Gevo, Inc. Case IPR2013-00539, Paper 33 (P.T.A.B. 2015), illustrates the importance of providing more than attorney argument to show that claims have written description support in a provisional application. 
Continue Reading Establishing Written Description Support May Require Supporting Evidence, More Than Attorney Argument