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Tag Archives: PTAB

PTAB Invalidates Data Privacy Risk Assessment Patent

Posted in IP, Patent Law, Privacy

Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible. OneTrust’s patent,… Continue Reading

Supreme Court: Federal Government Cannot Challenge Patents in PTAB

Posted in Intellectual Property Litigation, IP, Patent Law

The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based… Continue Reading

Are Rules for Playing a Game Patentable?

Posted in Intellectual Property Litigation, IP, Patent Law

A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature, natural phenomena, and abstract ideas. The Federal Circuit Court of Appeals has many times had to decide what these… Continue Reading

Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

Posted in Patent Law

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners. When a patent… Continue Reading

District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel

Posted in Patent Law

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C. § 103 based on IPR Estoppel under 35 U.S.C. § 315(e)(2).  In the case, Plaintiff The California Institute of… Continue Reading

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

Posted in Copyright Law, Patent Law, Trademark Law

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision.  In Phigenix v. ImmunoGen, the Federal Circuit clarified that while there is no standing… Continue Reading

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

Posted in Patent Law

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”).  An IPR, PGR, or CBM challenge begins with a petition filed by the challenging party that identifies each claim challenged and the grounds for each challenge.  … Continue Reading

Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of Re-exam

Posted in Patent Law

By:  Eric Caligiuri In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal Board (“PTAB”) should be examined under the Phillips standard of claim  construction, and not the… Continue Reading