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By: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Latest from AIA Blog

AIA Blog

In Rare Sua Sponte Order, PTAB Finds Using a Trademark Could Render Claim Indefinite

By Publisher
March 17, 2021

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

IPR and CBM Statistics for Final Written Decisions Issued in December 2020 and January 2021

By Daniel F. Klodowski Michael R. Galgano Zachery D. Olah
March 10, 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…

AIA Blog

Redemption of Loyalty Points Is a Patent-Ineligible Abstract Idea, Federal Circuit Holds

By Publisher
February 26, 2021

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

AIA Blog

Coming into Focus: Federal Circuit Reverses PTAB, Finds Independent Claims of Immersion Photography Device Unpatentable as Obvious

By Publisher
February 24, 2021

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

AIA Blog

No Unpatentability in a Successful Motion to Amend

By Publisher
February 23, 2021

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…

AIA Blog

Federal Circuit Partially Vacates PTAB Decision in Mixed Victory for Samsung

By Publisher
February 22, 2021

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…

AIA Blog

Disavowal of Infringement Case Moots IPR Appeal

By Publisher
February 11, 2021

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…

AIA Blog

USPTO Issues Memorandum Aligning Indefiniteness Standard with District Court

By Brooke M. Wilner
January 11, 2021

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…

AIA Blog

IPR and CBM Statistics for Final Written Decisions Issued in October and November 2020

By Daniel F. Klodowski Michael R. Galgano Zachery D. Olah
January 8, 2021

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…

AIA Blog

Two New Precedential PTAB Decisions Applying the Fintiv Factors

By Amanda K. Murphy
December 22, 2020

On Thursday, December 17, 2020, the Board designated portions of two decisions applying the Fintiv factors as precedential:  Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) and Snap, Inc. v. SRK Technology…

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