Patent Law Weblog
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- Allen v. Cooper (4th Cir. 2026)
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Category: Post-Grant Proceedings
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CBM Patent Review Denied for Claims Lacking Financial Subject Matter By Joseph Herndon — The PTAB denied institution of a covered business method (CBM) patent review in a case between BMC Software Inc. (Petitioner) v. zIT Consulting GmbH (Patent Owner). Petitioner, BMC Software, Inc., filed a Petition to institute a CBM patent review of claims…
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By Kevin E. Noonan — Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented these proceedings (at §§ 42.1-42.80 and 42.100-42.123). Genzyme has addressed their complaints about the…
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By Joseph Herndon — Sally Beauty (Petitioner) filed a Petition requesting a review under the transitional program for covered business method (CBM) patents of U.S. Patent No. 5,969,324, owned by Intellectual Ventures I LLC (IV). Sally Beauty challenged the patentability of claims 1–14 of the '324 Patent under 35 U.S.C. §§ 101, 102, and 103. …
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By Michael Borella — A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is filed within nine months of the challenged patent's issuance. To date, there have…
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By Joseph Herndon — On March 10, 2016, Silver Star Capital, LLC filed a petition for Inter Partes Review of U.S. Patent No. 6,212,079 (IPR2016-00736). The patent owner is Power Integrations, Inc. On its face, this seems like another IPR filed using the post grant review process of the AIA as intended. However, the patent…
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By Andrew Williams — On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR proceedings. Specifically, the Court requested that Appellant (Aqua Products, Inc.) and Intervenor…
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By Michael Borella — McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted the IPR, and eventually rendered a final decision finding that all challenged claims of the '413 patent…
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By Kevin E. Noonan — The Federal Circuit affirmed the decision by the Patent Trial and Appeals Board (PTAB) in an inter partes review (IPR) that the claims of Genzyme's U.S Patent Nos. 7,351,410 and 7,655,226 were obvious, in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc. The claims at issue are directed to methods…
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By Andrew Williams — The saga of the first-filed IPR petition (IPR2012-00001) came to a close today when the Supreme Court decided the Cuozzo Speed Technologies, LLC v. Lee case. We have been following this case ever since the PTAB issued its Final Written Decision — the first that the PTAB ever issued. On the…
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By Kevin E. Noonan — In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act ("AIA"), the Supreme Court ruled that the Patent and Trademark Office's positions on two of the law's provisions regarding inter partes review ("IPR") were correct. First, the Court held unanimously that the USPTO properly applied…
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