A difference between post-grant proceedings (i.e., inter partes review and covered business methods) and its predecessor (i.e., ex parte and inter partes reexaminations) is the ability for parties in post-grant proceedings to settle and request termination of the proceedings. Both federal statutory authority and USPTO rules govern the nature of settlements
Effect of Recent Federal Circuit Decisions on CBM Filings, Institution Rate
By Mark T. Rawls on
Posted in About the PTAB
The Federal Circuit recently changed the scope of CBM eligible patents. While the Patent Trial and Appeals Board (PTAB) had previously interpreted its jurisdiction broadly, the Federal Circuit, in two recent decisions, considerably narrowed the universe of patents eligible for CBM review. This post analyzes the results of those decisions as they have played out…
Further Guidance on Subject-Matter Eligibility in Apple, Inc. v. Ameranth, Inc.
By Mark T. Rawls & Derek F. Dahlgren on
Posted in Appellate Decisions
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;…
Limiting the Scope of CBM Eligibility: Unwired Planet, LLC v. Google Inc. (Fed. Cir. Nov. 21, 2016)
By Eric D. Blatt & Derek F. Dahlgren on
Posted in Appellate Decisions
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…
PTAB Real Party-in-Interest Issues — Guidance From the Supreme Court?
By Nancy J. Linck & Derek F. Dahlgren on
Posted in PTAB Decisions
The PTAB has been reluctant to find that an unnamed party is a real party-in-interest in an AIA review or in privity with the named party. Usually a patent owner attempting to establish that a real party-in-interest has not been named has had to establish that the unnamed party exerted control or could have exerted…
The Supreme Court’s Cuozzo Decision Leaves Many Questions Unanswered
By Derek F. Dahlgren on
Posted in Appellate Decisions
On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies v. Lee. On its face, it is a broad win for the Patent Office. The Supreme Court affirmed the use of the “broadest reasonable interpretation” standard for claim construction in Patent Office review proceedings and the limited reviewability of the…
The Surging Tide of AIA Review Appeals
By Derek F. Dahlgren & Spencer T. Wiles on
Posted in Appellate Decisions
The America Invents Act (AIA) of 2011 ushered in a new era for the Court of Appeals for the Federal Circuit, introducing 3 new post-grant administrative proceedings that are conducted before the U.S. Patent Trial and Appeal Board (PTAB) and appealable to the Federal Circuit. The proceedings introduced by the AIA include the inter partes…