Patent Law Weblog
recent posts
- Retired Judges File Amicus Brief in Support of Judge Newman
- Hikma v. Amarin at the Supreme Court: The Parties’ Opening Briefs
- Teva Pharmaceuticals International v. Eli Lilly & Co. (Fed. Cir. 2026)
- USPTO Extends Artificial Intelligence Search Automated Pilot Program (ASAP!)
- USPTO Announces That It Has Turned the Corner on Unexamined Application Backlog
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Category: Patent Trial and Appeal Board
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By Donald Zuhn — After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and…
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By Kevin E. Noonan — As she has done many times before (and so many times that she has been unfairly characterized as a scold on the Federal Circuit), Judge Pauline Newman dissented from the panel majority decision affirming an obviousness determination by the U.S. Patent and Trademark Office in an inter partes review by…
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Prolitec Inc. v. Scentair Technologies, Inc. (Fed. Cir. 2015) By Andrew Williams — In another unsurprising turn, the Federal Circuit affirmed the motion-to-amend practice adopted by the PTAB in IPR proceedings. The majority opinion in Prolitec Inc. v. Scentair Technologies, Inc., authored by Chief Judge Prost, concluded (among other things) that the Board's approach of…
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By Donald Zuhn — Last month, in Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated the decisions of the Patent Trial and Appeal Board concluding that Appellant Ariosa Diagnostics had not met its burden of proving that claims 1–30 of U.S. Patent No. 8,318,430 would have been obvious and remanded for for further…
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Computer-Readable Medium Claims vs. Printed Matter By Joseph Herndon — Most software or computer-related patent applications today include a number of different types of claims, such as method claims, device claims, and computer-readable medium (CRM) claims. Such CRM claims are usually directed to an article of manufacture, for example, a computer-readable medium, on which are…
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Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer By Joseph Herndon — The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision…
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By Andrew Williams — Earlier this week, in the Achates Reference Publishing, Inc. v. Apple Inc. case, the Federal Circuit reaffirmed the holding in In re Cuozzo Speed Techs., LLC that it could not review any decision by the Patent Trial and Appeal Board ("PTAB" or "Board") related to institution, including a determination whether the…
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By Michael Borella — As the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle with the implications of the decision. Alice provided a two-part test for patent-eligibility under 35 U.S.C.…
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By Andrew Williams — On August 25, 2015, the United States Patent and Trademark Office published a "Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews" in the Federal Register (80 Fed. Reg. 51540). This is the second request for comments related to the…
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By Kevin E. Noonan — Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce Michelle Lee took the occasion of the release of the revised PTAB Guidances last Thursday to provide the patent community with some statistics regarding the post-grant procedures established by the Leahy-Smith America Invents Act. These statistics, regarding…
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