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In Apple Inc. v. Corephotonics, LTD., the court addressed two final written decisions in inter partes review (“IPR”) proceedings and in particular (1) whether the Patent Trial and Appeal Board’s (“PTAB” or “Board”) claim construction is correct when the intrinsic evidence supports a different construction and relatedly whether the PTAB’s first final written decision relying on its claim construction should be vacated and remanded and (2) whether, in the second final written decision, the PTAB’s reliance on an invalidity ground not raised by any party should be vacated and remanded.Continue Reading Federal Circuit Vacates PTAB’s Decision Based on an Overly Narrow Claim Construction

In Corephotonics, Ltd. v. Apple Inc., 2022-1340, 2022-1341 (Fed. Cir. October 16, 2023), the decision addresses the Patent Trial and Appeal Board’s (“Board” or “PTAB”) obviousness determinations in five final written decisions. Specifically, this decision concerns the Board committed procedural and substantive errors in concluding the prior art references at issue are analogous art.Continue Reading Federal Circuit Grapples with What Constitutes Analogous Art

In Rembrandt Diagnostics, LP v. Alere, Inc. 2021-1796 (Fed. Cir. Aug. 11, 2023), the decision addresses the Patent Trial and Appeal Board’s obviousness determinations in an Inter Partes Review proceeding (IPR2016-01502), where the Board held the claims in the challenged patents unpatentable as obvious in view of the asserted prior art.Continue Reading Breaking down the Federal Circuits Reasoning in the Rembrandt vs Alere Patent Dispute

After considering comments from various stakeholders for nearly a year, on July 24, 2023, the USPTO issued the revised interim Director Review Process. Among other changes, the revised process now permits parties to request the Director Review on institution decisions in America Invents Act (AIA) proceedings. This is a significant expansion of the scope of director review, which allows petitioners who had no appeal options to an IPR denial to now have at least one avenue of review of an institution denial.Continue Reading PTAB Makes Significant Changes to Director Review Process

Since being appointed to the bench in 2018, Judge Alan Albright in Waco Texas has had one of the busiest patent dockets in the nation, rivaling that of Delaware and the Eastern District of Texas. He quickly gained a reputation as providing a quick trial schedule and moving a case forward. Judge Albright has stated that he aims to get to trial within 24 months of a complaint being filed.Continue Reading How Quickly are Judge Albright Patent Cases Going to Trial?

In a per curium order issued under seal May 3, 2023 but recently made public, the Patent Trial and Appeal Board awarded sanctions against Patent Owner, Longhorn Vaccines & Diagnostics, canceling all challenged claims of its five asserted patents for its “egregious abuse of the PTAB process.” Particularly, the Board determined that Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the Board by “selectively and improperly” withholding information material to the patentability of the claims challenged in the IPR proceeding.Continue Reading “Egregious Abuse” of the PTAB Process Leads to Adverse Decision Sanctions in IPR Proceeding

Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part Two of a Three-Part Article Series

Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three

Blockchain patent applications may be divided into two types: underlying technologies of blockchain, such as consensus methods, security, etc., and applications of blockchain in, e.g., fintech, legal, and other industries. In patent examination, the first type, because it recites underlying technology improvement, rarely elicits subject matter rejections. The second type, applications of blockchain, are often found to be directed to an abstract idea. This article analyzes a recent Patent Trial and Appeal Board (PTAB) decision in a blockchain patent application and explores drafting and prosecution strategies to anticipate subject matter scrutiny.
Continue Reading Blockchain Patentability Through The Lens Of A Recent PTAB Decision