The Current Roundup

CAFC: Dice game found ineligible for patenting. The examiner rejected the applicant’s claims for a dice game as directed to an abstract idea ineligible for patenting under § 101. The method included placing wagers on whether certain die faces will appear face up, rolling the dice, and paying a payout amount if at least one wagered …

PTAB Roundup

CAFC: Issue preclusion arising from a Rule 36 summary affirmance. In an earlier appeal involving the same patent owner and related patents, the Federal Circuit summarily affirmed several PTAB IPR decisions under Rule 36. That summary affirmance collaterally estopped the patent owner from revisiting in this appeal whether the Board correctly found that a particular …

PTAB Roundup

CAFC: Printed publication case revised.The Federal Circuit reissued its July 27 opinion (reported in the August 10, 2018 Roundup) that vacated the Board’s conclusion that a catalog was not a prior art printed publication. In coming to the same result, the Court explained that the catalog does not need to be made directly available to a …

PTAB Roundup

Don’t forget to register: The PTAB Bar Association’s webinar on appeals from the PTAB is next Tuesday, August 1, 2017, at 3:00 PM EDT. The panel will cover PTAB Federal Circuit appeal statistics, lessons learned, and new and emerging issues, including recent and pending Federal Circuit and Supreme Court cases that might affect our practice, …

PTAB Roundup

CAFC: Successful motion to amend vacated: The Board granted a patent owner’s motion to amend its claims, but the Federal Circuit vacated and remanded because the Board did not address the petitioner’s proposed prior-art combinations. The petitioner proposed modifying the prior-art references by adding features from different references, explaining why the ordinary artisan would have …

PTAB Roundup

Congress: STRONGER Patents Act of 2017: A bi-partisan group of senators introduced the Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act last week. The Act proposes significant changes to IPRs and PGRs, such as changing the claim construction standard, adding a standing requirement, limiting the number of proceedings that can …

PTAB Roundup

SCOTUS: Court will address constitutionality of IPRs under Article III and the Seventh Amendment: The Court will consider “[w]hether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a …

PTAB Roundup

PTAB Bar Association Inaugural Conference: Thank you to everyone who attended our Inaugural Conference at the Ritz-Carlton in Washington, D.C., on March 1-3, 2017. The conference was a huge success and we will see you next year! CAFC: Too many remands? The majority vacated and remanded an IPR after finding that the Board’s construction was …

PTAB Roundup

PTAB Bar Association Inaugural Conference sold out: We are pleased to announce that the Inaugural Conference on March 1-3, 2017, at the Ritz-Carlton in Washington, D.C. has sold out. Our agenda is here. If you would like to be added to the waiting list, please email andy.schwarz@mci-group.com. CAFC: Final written decision does not undermine preliminary …

PTAB Roundup

PTAB Bar Association Inaugural Conference: Join the PTAB Bar Association for its Inaugural Conference on March 1-3, 2017, at the Ritz-Carlton in Washington, D.C. This exciting nationwide conference will bring together members of the bench and of the PTAB Bar Association for discussions of PTAB best practices, recent developments and trends, policy considerations, view from …