by John Marlott | Jul 19, 2018 | CBMs
By: Lisa Furby and John Marlott A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a “technological...
by Matthew Johnson | May 23, 2018 | CBMs, Estoppel, Motions Practice, PTAB Trial Basics
By: Sue Gerber and Matt Johnson We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu. See Observations: Three Weeks After Supreme Court’s SAS Institute Decision. On...
by Carl Kukkonen | Dec 29, 2017 | CBMs
By Mike Lavine and Carl Kukkonen On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section 18 of the...
by Matthew Johnson | Oct 11, 2017 | CBMs, Standing
By Matt Johnson An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook, Inc. v. Skky, LLC,...
by Carl Kukkonen | Mar 13, 2017 | CBMs, Claim Construction
By Vishal Khatri and Carl Kukkonen In a decision dated February 27, 2017, the Board denied institution of Google Inc.’s petition for Covered Business Method Patent Review of claims 20, 21, 23–26, 28, and 29 of U.S. Patent No. 6,128,651 (“the ’651 patent”) owned by...
by John Marlott | Jan 19, 2017 | CBMs, PGR
By John Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as his...
