Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal.
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PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel
On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner.
The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised of hydrocarbons from bio oils and fats. The ’492 patent discloses a two-step process in which a feed stream of biological origin, diluted with a hydrocarbon, is first hydrodeoxygenated, and then isomerized. According to the ’492 patent, deoxygenation via hydrogenolysis requires a large amount of hydrogen, and releases a significant amount of heat that must be dissipated. To avoid these problems, the patented process “spikes” the feed stream with sulfur to favor the decarboxylation/decarbonylation reaction pathways.Continue Reading PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel
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 Review Reform in Bill Approved by Senate Committee
Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137. In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.
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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.
Continue Reading PTAB Cancels Metasearch Patents Under Section 101, Rejecting Arguments