Category Archives: America Invents Act

  The USPTO released statistics on AIA petitions (11/30/16) which are available here: https://www.uspto.gov/sites/default/files/documents/aia_statistics_november2016.pdf The PTO data includes Covered Business Method (CBM) and Post-Grant Reviews (PGRs) but the Inter Partes Review (IPR) is by far the most-used pathway. Some of … Continue reading

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Cuozzo Speed Technologies, LLC v. Lee (USPTO)

No. 14-446 U.S. Supreme Court (SCOTUS (Justice Breyer)) June 20, 2016 Brief Summary: PTO decision whether or not to institute IPR is non-appealable under §314(d) and PTO’s use of broadest reasonable claim construction standard in IPR is proper. Summary: This … Continue reading

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SAS Institute, Inc. v. ComplementSoft, Inc.

Docket No. 2015-1346, -1347 NEWMAN (C/D), CHEN, STOLL June 10, 2016 Brief Summary: Board claim constructions affirmed except as to claim 4 since it changed its construction in the final written decision without letting the parties respond. Summary: Following IPR … Continue reading

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PPC Broadband, Inc. v. Corning Optical Communications RF, LLC

Docket No. 2015-1361, -1366, -1368, -1369 (IPR2013-00340, -00345, -00346, -00347) MOORE, O’MALLEY, WALLACH February 22, 2016 Brief Summary: Certain Board claim constructions found not to be unreasonable under Cuozzo (broadest reasonable interpretation) even though it is “not necessarily the correct … Continue reading

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Rosebud LMS Inc. et al. v. Adobe Systems Incorporated

Docket No. 2015-1428 MOORE, HUGHES, STOLL February 9, 2016 Brief Summary: DC grant of SJ to Adobe as not liable for pre-issuance damages under 35 USC § 154(d) because it had no actual notice of the published patent application affirmed. … Continue reading

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Ethicon Endo-Surgery, Inc. v. Covidien LP

Docket Nos. 2014-1771 (IPR2013-00209) NEWMAN(D), DYK, TARANTO January 13, 2016 Update (6/22/16):  Petition for rehearing en banc denied (Judge Newman dissented arguing different panels should institute and decide on the merits). Brief Summary: FC concluded same Board panel may both … Continue reading

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Merck & CIE v. Gnosis S.P.A. et al.

Docket Nos. 2014-1779 NEWMAN(D), PLAGER, HUGHES December 17, 2015 Brief Summary: PTAB decision of obviousness affirmed (motivation derived from prior art, no nexus shown). Judge Newman’s dissent argues post-grant review improperly allows “the petitioner [to] provide invalidity by no more … Continue reading

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