Category: Patent Eligible Subject Matter

Amendments before the PTAB, America Invents Act, Appeals, Court of Appeals Fed Circuit, Covered Business Methods, Federal Circuit, Inter Partes Review, Lack of Written Description, On-Sale BAR, One-year Statutory Bar, Patent Eligible Subject Matter, Post Grant Review, Printed Matter Doctrine, PTAB Procedure, PTAB Trial Practice Guide, Supreme Court, Trial Tactics, USPTO

Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In … Continue reading Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

America Invents Act, Anticipation/Obvious, Appeals, Claim Construction, Court of Appeals Fed Circuit, Federal Circuit, Mental Steps Doctrine, Patent Eligible Subject Matter, Printed Matter Doctrine, USPTO

CAFC Affirms PTAB’s Decision That Printed Matter Doctrine Can Be Used In Claim Construction

By Reza Mollaaghababa In an inter partes review proceeding, a challenger cannot raise patent-eligibility as a ground of invalidity.  Rather, the invalidity grounds are limited to lack of novelty and obviousness.  Notwithstanding, in construing claim terms, the PTAB can decide not to give patentable weight to certain claim limitations that are not patent-eligible. In Praxair … Continue reading CAFC Affirms PTAB’s Decision That Printed Matter Doctrine Can Be Used In Claim Construction

America Invents Act, Covered Business Methods, Patent Eligible Subject Matter

PTAB Rejects Covered Business Method Claims

By Ben Snitkoff On January 21, 2014, the Patent Trial and Appeal Board issued its second Final Written Decision in a Covered Business Method (CBM) Proceeding under the America Invents Act. CBM Proceedings allow for the review of a business method patent on any ground of patentability, and fill a gap between Inter-Partes Review (IPR) … Continue reading PTAB Rejects Covered Business Method Claims

America Invents Act, Covered Business Methods, District Court, Federal Circuit, Patent Eligible Subject Matter, Post Grant Review, Trial Tactics, USPTO

PTAB Renders Its First Decision

By Tom Engellenner On June 11, 2013, the Patent Trial and Appeal Board (PTAB) rendered its first decision in a case under the new AIA procedures for administratively contesting patents.  In the case of SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper 70 (June 11, 2013), the PTAB found Versata’s patent claims ineligible … Continue reading PTAB Renders Its First Decision