Patent Law Weblog
recent posts
- Why the Alice Test is Stupid, Part IV: The Usefulness Paradox
- Teva Capitulates to Federal Trade Commission Coercion
- USPTO Issues Memoranda on Subject Matter Eligibility
- USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same
- Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims
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Category: Patent Trial and Appeal Board
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By Michael Borella and Walter DeGroft[1] – Each year since 2021, we have examined how the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has been deciding appeals of § 101 rejections from examiners.[2] And so far, the numbers have been remarkably similar. 2024 was no exception — applicants continued to face affirmance…
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By Kevin E. Noonan — Received wisdom is that inter partes review proceedings are limited to prior art as defined by patents and printed publications. But in recently decided Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., another prior art species, applicant-admitted prior art (AAPA), played a strong role in helping the Petitioner satisfy the burden…
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By Kevin E. Noonan — Only a few days after the one-year anniversary of hearing oral argument, the Federal Circuit handed down its decision in Regents of the University of California v. Broad Institute, Inc. on Monday. The opinion reviewed the Patent Trial and Appeal Board's decision in Interference No. 106,115 between Senior Party the…
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By Kevin E. Noonan — Only a few days after the one-year anniversary of hearing oral argument, the Federal Circuit handed down its decision in Regents of the University of California v. Broad Institute, Inc. In short — and to be explicated more fully in a coming post — the decision was completely in the…
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By Kevin E. Noonan — The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims, frequently on obviousness grounds. Failure to so find, in addition to being less…
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By Andrew Velzen — As reported by Quantum Insider[1], this past week, the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) overturned an examiner's rejections of an application directed to a quantum computing invention.[2] Even though this decision is based solely on the view of three administrative patent…
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By Kevin E. Noonan — Ever since the Supreme Court's decision in Dickinson v. Zurko, federal courts (including the Federal Circuit) are compelled under the Administrative Procedures Act to review factual determinations by the U.S. Patent and Trademark Office under a substantial evidence standard. The consequences of this standard are illustrated (once again) in the Federal…
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By Michael Borella, Mackenna Dunn*, and Garrett "Jake" Lee** — Over the last two years, we have studied the examiner affirmance rates of the Patent Trial and Appeal Board (PTAB) for § 101 rejections. The PTAB is the administrative court of the U.S. Patent and Trademark Office (USPTO) that handles applicant appeals of examiner rejections,…
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By Kevin E. Noonan – One of the most notable consequences (intended or not, for good or ill) of the Leahy-Smith America Invents Act (AIA) has been the possibility (now likelihood, if only in frequency) that the decisions of the Patent Trial and Appeal Board and district courts will be different (typically to the detriment of patent…
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By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 17th annual list of top patent stories. For 2023, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…
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