Tag Archives: Federal Circuit

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 to PTAB – Explain yourself!!

By Heather R. Kissling on Posted in Appeals, Inter Partes Review, Sections 102/103
The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious.  In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings.  These decisions … 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

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
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