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February 04, 2019
2019 Guidance Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 By Ellen Smith and Derek Kim On January 4, 2019, the United States Patent and Trademark Office (“USPTO”) issued examiner guidance for examining definiteness of functional claim limitations under 35 U.S.C. § 112.  Although the new guidance does not have the...
February 01, 2019
PTAB Institutes Unified Patents IPR Petition Despire Patent Owner’s RPI and General Plastic Challenges: On December 20, 2018, the Patent Trial and Appeal Board (PTAB) instituted Unified Patents’ petition for Inter Partes Review (IPR) of Patent No. 9,253,239, assigned to Bradium Technologies LLC. Bradium asserted that was deficient for failure to name all real parties-in-interest...
January 24, 2019
On January 7, 2019, the USPTO released revised Subject Matter Eligibility Guidance (the “Revised Guidance”) which provides revised guidelines for examiners to apply while evaluating patent subject matter eligibility. The Revised Guidance acknowledges that properly applying the Supreme Court’s frame work for evaluating patent eligibility (the “Alice/Mayo test”) has proven to be difficult and has...
October 11, 2018
                Petitioner should discuss the prosecution history of all relevant related patents when arguing that an issue was not previously considered by the Office The Board has discretion to deny institution of an inter partes review under 35 U.S.C. 325(d) when “the same or substantially the same prior...
August 02, 2018
In Ticketnetwork, Inc. v. Ceats, LLC, CBM2018-00004 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“the Board”) held that Ticketnetwork failed to establish standing under 37 C.F.R. § 42.302, and accordingly did not institute a covered business method (“CBM”) review of U.S. Patent No. 8,229,774 (the “’744 Patent”). In 2010, Ceats sued Ticketmaster...
June 28, 2018
In Campbell Soup Company, et al. v. Gamon Plus, Inc., IPR2017-00087, Paper 75 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“PTAB”) found that “an appreciable amount of Campbell’s increased commercial success of soup” was attributable to Gamon’s product covered by the claims and, thus, found claim 27 of U.S. Patent 8,827,111...
May 24, 2018
  OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS OUTWEIGHS WEAK MOTIVATION TO COMBINE Author: Hui Wauters In Fox Factory Holding Corp. v. SRAM, LLC, Case No. IPR2016-01876 (April 2, 2018), the Patent Trial and Appeal Board (PTAB) found that Patent Owner’s extremely strong overall showing of objective indicia of non-obviousness overcomes Petitioner’s, at best, weak motivation to combine...
May 09, 2018
In Cisco Systems v. Hewlett Packard Enterprise Company, IPR2017-01933, Paper 9 (PTAB 2018) (Decision Denying Institution of Review), the Patent Trial and Appeal Board (“the Board”) held that a merger between Cisco and another company called Springboard that was completed after Cisco filed a petition for inter partes review (IPR) created a real party in...
April 23, 2018
Becton,  Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative). Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational). In two decisions, designated as informative on March 21,...
April 03, 2018
Claim Validity Upheld Based on Showing of Lack of Motivation to Combine References Author: James A. Gromada In Resmed Limited et al. v. Fisher & Paykel Healthcare Limited, Case No. IPR2016-01724, the Patent Trial and Appeal Board (PTAB) was presented with a question as to whether several claims of U.S. Patent No. 8,453,641 B2 (hereinafter...