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Federal Circuit Reverses PTAB Claim Interpretation in Dispute over Credit Card Security Patent

December 22, 2016 | Blog | By William B. Kezer

The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today.  The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.
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USPTO Proposes Fee Increases for FY 2017

December 21, 2016 | Blog | By Mark Pino

The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.
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Supreme Court to Hear Patent Venue Case

December 15, 2016 | Blog | By Matthew Hurley, Brad M Scheller

The plot just thickened in the long-running debate over where patent cases should be litigated.
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The Federal Circuit Confirms That It Will Review PTAB’s CBM Determinations … To A Certain Extent

December 2, 2016 | Blog | By William Meunier, Serge Subach

The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
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Changes to the “But-For” Standard For Materiality at the U.S. Patent and Trademark Office?

December 1, 2016 | Blog | By Christina Sperry

On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).
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PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says

November 23, 2016 | Blog | By William Meunier

The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.
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Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

November 21, 2016 | Blog | By Brad M Scheller

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.
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Intellectual Ventures Petitions Federal Circuit for Full Court Review

November 18, 2016 | Blog | By Michael Renaud, Sandra Badin, Matthew Karambelas

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.
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Jawbone Fails to Prove Trade Secret Misappropriation by Fitbit at the ITC

November 16, 2016 | Blog | By Michael Renaud, Nick Armington

Trade secret theft is a growing threat to American businesses. One obstacle to addressing misappropriation through a lawsuit can be a lack of direct evidence of theft.
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District Court Finds General Description of Trade Secret Sufficient to Satisfy Pleading Standard under Defend Trade Secrets Act

November 16, 2016 | Blog | By Michael Renaud, Nick Armington

An important question for any plaintiff alleging trade secret misappropriation is: “How much detail should I provide about the stolen trade secrets in the complaint?” Answering this question often requires the balancing of two important considerations.
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Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

November 15, 2016 | Blog | By Brad M Scheller

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
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An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

November 11, 2016 | Blog | By Christina Sperry

The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.
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DJ Mark Ronson and Bruno Mars Get “Funked” With New Copyright Suit Over “Uptown Funk”

November 10, 2016 | Blog | By Brad M Scheller, Daniel Weinger, Anthony Faillaci

On Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”
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The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope for Modern Innovators

November 8, 2016 | Blog | By Michael Van Loy

On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.
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Why No One is Talking About Derivation Proceedings

November 2, 2016 | Blog | By Kevin Amendt

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.
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Patent-Agent Privilege and the USPTO’s Proposed New Rule

November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
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ITC Institutes “Certain Silicon-on-Insulator Wafers” Investigation – Only the Fourth 100-Day Pilot Program Ordered

October 31, 2016 | Blog | By Michael Renaud, Daniel Weinger

On October 19, 2016, the ITC instituted Investigation No. 1025, based on a complaint filed on May 26, 2016, by Silicon Genesis Corporation (SiGen), against Soitec, S.A. (Soitec). As part of the institution, the ITC ordered that the ALJ issue an early initial determination regarding whether SiGen “has satisfied the economic prong of the domestic industry requirement.”
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Kyle Bass’ First IPR Win At The PTAB

October 28, 2016 | Blog | By Christina Sperry

Since Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.
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PTAB Vacating Its Initial Institution Decision is Not Appealable, Federal Circuit Says

October 28, 2016 | Blog | By William Meunier

The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.
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Analyzing Patent Claims Having Conditional Language – the PTAB Provides Clarity

October 21, 2016 | Blog | By Christina Sperry, Monique Winters Macek

The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.
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