Derek F. Dahlgren

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The PTAB will soon implement a change in its claim construction standard in post-issuance reviews, moving from the broadest reasonable interpretation (“BRI”) standard to the standard articulated in the Federal Circuit’s opinion, Phillips v. AWH Corp.[1]  We previously covered this on our blog here. The effects of the change may be significant in…

On Thursday of last week, the Federal Circuit sitting en banc heard oral arguments in Wi-Fi One, LLC v. Broadcom Corporation. At its core, this rehearing focuses on the relatively narrow issue of whether USPTO determinations regarding the timeliness requirements of 35 USC § 315(b) are eligible for judicial review. However, based on the…

In a rare reversal of a Board IPR decision, the Federal Circuit in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-1900 (March 14, 2017) (Judges Lourie, Moore, and Taranto), distinguished between an anticipatory reference that explicitly discloses multiple possible combinations and a reference that fails to disclose all claim elements…

A new § 101 decision provides a little more insight into subject-matter eligibility. In Apple, Inv. v. Ameranth, Inc., Case Nos. 2015-1703, and -1704, the Federal Circuit reviewed decisions in CBM2014-00013, -00015, and -00016 (decision dated November 29, 2016). The CBMs involved subject matter eligibility challenges against the claims of U.S. Patent Nos. 6,384,850;…

In the recent opinion in Unwired Planet, LLC v. Google Inc., the Federal Circuit has limited the reach of covered business method (CBM) reviews.  The Board had framed its CBM eligibility standard as asking “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial…

In Husky Injection Molding v. Athena Automation, the Federal Circuit has again refused to review a decision underlying the Board’s institution decision, in this case, whether the Petitioner was barred from filing an inter partes review petition based on assignor estoppel.  As in Achates, the court concludes that it lacks jurisdiction to conduct…

In Cox Communications, Inc. v. Sprint Communication Co. LP, No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the Federal Circuit reversed the district court’s determination that certain claims were indefinite under 35 U.S.C. § 112 ¶ 2 due to the phrase “processing system.”  Id. at 3.  The majority did so in a rather unique way,…

An increasing number of cases demonstrate the challenges that the Federal Circuit and parties face when dealing with standing questions in appeals from administrative agencies.  These challenges only emphasize the growing need for a change in the Court’s rules of procedure.

Standing in cases from the U.S. Patent and Trademark Office (“PTO”) has become a…