Author Archives: Patrick J. Halloran, Ph.D., J.D.

IPR obviousness decision based on common sense modification of prior art affirmed

B/E Aerospace, Inc. v. C&D Zodiac, Inc. Docket No. 2019-1935, -1936 (IPR2017-01275, -01276) LOURIE, REYNA, HUGHES June 26, 2020 Brief Summary: Board IPR obviousness decision based in part on common sense affirmed. Summary: B/E appealed Board final written decision (FWD) … Continue reading

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IPR obviousness determinations affirmed; preamble limiting due to reliance for antecedent basis

Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC Docket No. 2019-1622, -1623 (IPR2017-01809, -01810) LOURIE, MOORE, O’MALLEY June 25, 2020 Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the … Continue reading

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Patent ineligibility decision affirmed as claims “recite no technological solution”

Dropbox, Inc. et al. v. Synchronoss Technologies, Inc. Docket No. 2019-1765, -1767, -1823 PROST, WALLACH, HUGHES June 19, 2020 Non-precedential Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in … Continue reading

Posted in Patentability, Section 101 (see also Patentability), Software | Leave a comment

IPR obviousness and non-obviousness findings affirmed (e.g,. the Board “explained why”)

Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor) Docket No. 2019-1582, -1635 (IPR2017-01812, -01920) LOURIE, MOORE, O’MALLEY May 29, 2020 Non-precedential Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and … Continue reading

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

IPR obviousness decision affirmed; Board’s real-party-in-interest determination not appealable under § 314(d)

ESIP Series 2, LLC v. Puzhen Life USA, LLC Docket No. 2019-1659 (IPR2019-02197) LOURIE, REYNA, HUGHES May 19, 2020 Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d). Summary: ESIP appealed Board IPR decision … Continue reading

Posted in Appeal, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Fox Factory, Inc. v. SRAM, LLC Docket No. 2019-1544 (IPR2017-01440) NEWMAN, O’MALLEY, TARANTO May 18, 2020 Non-precedential Brief Summary: Board IPR obviousness FWD affirmed based on SRAM’s secondary evidence (e.g., “industry skepticism and subsequent praise and long-felt need”). Summary: Fox … Continue reading

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IPR obviousness findings affirmed except for one claim that “describes a stand-alone alternative” to means-plus-function limitation

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al. Docket No. 2019-1105, -1106 (IPR2017-01018, -01019) NEWMAN, O’MALLEY, TARANTO May 15, 2020 Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. … Continue reading

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness | Leave a comment

Board IPR FWD finding BSN’s claims obvious affirmed, claim construction arguments waived

Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor Docket No. 2019-1584 (IPR2017-01899) LOURIE, MOORE, O’MALLEY May 18, 2020 Non-precedential Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to … Continue reading

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Corrected assignment effective to show ownership, willful infringement finding and prejudgment interest award affirmed

Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc. Docket No. 2018-2416, 2019-1012 O’MALLEY, REYNA, WALLACH May 13, 2020 Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective … Continue reading

Posted in Assignment / Ownership, Damages, Willfullness | Leave a comment

Uniloc claim ineligible under § 101 as abstract, claim includes “no specific asserted improvements”

Cisco Systems, Inc. v. Uniloc 2017 LLC Docket No. 2019-2048 MOORE, O’MALLEY, TARANTO May 13, 2020 Non-Precedential Brief Summary: DC finding of patent ineligibility under § 101 affirmed (abstract idea since claim includes “no specific asserted improvements”). Summary: Uniloc appealed … Continue reading

Posted in Patent Eligibility (101), Patentability, Software | Leave a comment