In a rare sua sponte action, the Board issued an order providing notice that the patent owner’s amended claims in an ongoing PGR may be unpatentable. Galderma S.A. v. Medy-Tox, Inc., PGR2019-00062, Paper 54 (Feb. 24, 2021). The Board found
AIA Blog
The AIA Blog, published by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focuses on issues related to patent law and proceedings before the Patent Trial and Appeal Board (PTAB). It covers topics such as inter partes review (IPR), covered business method (CBM) reviews, patent eligibility under Section 101, claim definiteness, motions to amend patents, and Federal Circuit decisions impacting patentability standards. The blog provides updates and analysis on patent litigation strategies, PTAB procedural developments, and key rulings affecting patent claims and their validity.
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IPR and CBM Statistics for Final Written Decisions Issued in December 2020 and January 2021
The Patent Trial and Appeal Board issued 28 IPR and CBM Final Written Decisions in December, including decisions following remands from the Federal Circuit, cancelling 243 (61.06%) instituted claims while maintaining the patentability of 143 (35.93%) instituted claims. Patent owners…
Redemption of Loyalty Points Is a Patent-Ineligible Abstract Idea, Federal Circuit Holds
By Publisher
In cxLoyalty, Inc. v. Maritz Holdings Inc., Nos. 2020-1307, 1309 (February 8, 2021), the Federal Circuit found both original and substitute claims in a covered business method review ineligible for patent protection under 35 U.S.C. § 101.Read more
Coming into Focus: Federal Circuit Reverses PTAB, Finds Independent Claims of Immersion Photography Device Unpatentable as Obvious
By Publisher
In Canfield Sci., Inc. v. Melanoscan, LLC, No. 19-1927 (Fed. Cir. Feb. 18, 2021), the Federal Circuit applied KSR v. Teleflex to reverse in part the PTAB’s decision of nonobviousness.Read more
No Unpatentability in a Successful Motion to Amend
By Publisher
In Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR2016-00712, Paper 112 (P.T.A.B. Oct. 22, 2019), aff’d without opinion (Fed. Cir. Jan. 15, 2021), the Patent Trial and Appeal Board (“PTAB”) granted Patent Owner’s motion to amend, finding that Petitioner had…
Federal Circuit Partially Vacates PTAB Decision in Mixed Victory for Samsung
By Publisher
On February 1, 2021, the Federal Circuit partially vacated the PTAB’s invalidation of a video compression patent challenged by Samsung, holding that the Board “deviated impermissibly from the invalidity theory set forth in Samsung’s petition,” but affirming that Samsung’s relied-upon…
Disavowal of Infringement Case Moots IPR Appeal
By Publisher
In ABS Glob., Inc. v. Cytonome/ST, LLC, No. 2019-2051 (Fed. Cir. Jan. 6, 2021), a panel of the U.S. Court of Appeals for the Federal Circuit (STOLL, Moore) (Prost, dissenting-in-part) dismissed a petitioner’s appeal from the Final Written Decision of…
USPTO Issues Memorandum Aligning Indefiniteness Standard with District Court
On January 6, 2021, the U.S. Patent & Trademark Office issued a memorandum to the Patent Trial and Appeal Board, requiring that, in post-grant trial proceedings, the Board must follow the same indefiniteness standard used in district courts. The Board…
IPR and CBM Statistics for Final Written Decisions Issued in October and November 2020
The Patent Trial and Appeal Board issued 37 IPR and CBM Final Written Decisions in October, including decisions following remands from the Federal Circuit, cancelling 297 (61.49%) instituted claims while maintaining the patentability of 159 (32.92%) instituted claims. Patent owners…