En Banc Federal Circuit Considering The Ground Rules For Claim Amendments In Post-Grant Proceedings: In re: Aqua Products
By John Marlott Claim amendments in IPRs are statutorily authorized by the AIA. 35 U.S.C. § 316(d)(1) provides that “[d]uring an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following...
Google Inc. v. Locationet Systems Ltd., CBM2016-00062 – Institution Denied
Article and Photo By Doug Pearson In a decision dated October 25, 2016, the PTAB denied institution of Google Inc.’s petition for Covered Business Method Patent Review (CBM) of claims 14-17 and 19 of U.S. Patent No. 6,771,970 (“the ‘970 patent”) owned by Locationet...
PTAB Determines that a Patent’s File History is a Printed Publication
By Dave Cochran In a final written decision in Duodecad IT Services Luxembourg S.A.R.L, et al. v. WAG Acquisition, LLC (IPR2015-01036, paper 17), the PTAB took up the question of whether a patent's file history qualifies as a "printed publication" under 35 U.S.C....
USPTO Issues Memorandum re Recent Subject Matter Eligibility Decisions
On November 2nd, the USPTO issued new guidance to Patent Examiners regarding § 101 subject matter eligibility. The memorandum provides guidance based on Federal Circuit decisions issued since the Office's most recent, May 2016, update. The four page letter includes...
PTAB Declines to Institute IPR Proceedings Against Three Biogen TYSABRI® Formulation Patents
By: Irina Britva and Patrick Elsevier On October 17, 2016, the PTAB declined the requests of Swiss Pharma International AG (“Swiss Pharma”) in cases IPR2016-00912, IPR2016-00915, and IPR2016-00916 to institute inter partes reviews (“IPRs”) of three patents owned by...