Resources

    Blog

    July 05, 2017
    Federal Circuit No. 2016-1599 (Fed. Cir. May 11, 2017) In Aylus Networks, Inc. v. Apple Inc. (Fed. Cir. No. 2016-1599, May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to...
    June 15, 2017
    On June 12, 2017, the Supreme Court granted certiorari to review whether the America Invents Act’s provisions on inter partes review (IPR) violate the Seventh Amendment right to jury by extinguishing patent claims through a non-Article III court. Oil States Energy Services LLC v. Greene’s Energy Group LLC.1 The USPTO’s authority to decide IPRs does...
    April 18, 2017
    The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and...
    January 27, 2017
    In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or...
    October 06, 2016
    It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090).  In view of the PTAB’s recent denial, Veritas appealed to...
    September 26, 2016
    When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued.  The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director...
    September 02, 2016
    On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas...
    August 02, 2016
    The Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend).  However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April...
    July 13, 2016
    The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents.  While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method  (“CBM”) patents is another mechanism for reviewing validity.  Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the...
    June 23, 2016
    On June 20, 2016, the Supreme Court issued its ruling in Cuozzo Speed Technologies, LLC v. Lee.  There were two issues presented in Cuozzo: (1) whether the Board’s institution decision of an IPR is appealable, and (2) whether the broadest reasonable construction standard is appropriate to apply in patent office proceedings.  For both of these...