PTAB Judge Issues First Dissent on Claim Construction

Author: Jonathan R.K. Stroud
Editor: Michael J. McCabe, II

In a PTAB first, an administrative law judge concurred with the majority’s unpatentability conclusions while disagreeing with the majority’s construction of a key term in the patent.

The decision, Smith & Nephew, Inc. v. Convatec Technologies, Inc., held unpatentable thirteen claims directed to methods of enhancing photostability of silver in antimicrobial material useful for wound dressings and medical devices. IPR2013-00102, Paper 87 (P.T.A.B. May 29, 2014). Though agreeing on the ultimate result of unpatentability, the panel disagreed on the construction of the term “substantially photostable.”

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“Technical Invention” Exclusion Tempers Broad “Financial Service” Interpretation in CBM Institution Decision

Author:  Justin N. Mullen
Editor:  Jeffrey C. Totten

When is a patent directed at financial services not a “covered business method” under Section 18(d) of the AIA? When it claims a “technological invention.” Experian Mktg. Solutions, Inc. v. RPost Commc’ns Ltd., CBM 2014-0010 (Paper No. 20) (Apr. 22, 2014), the first PTAB decision denying institution of Covered Business Method (CBM) Patent Review, illustrates how the “technological invention” exception limits the scope of CBM review.

Experian involved U.S. Patent Number 8,224,913 (the ‘913 patent), directed to “a method of transmitting a message from a sender to a recipient through a server.” The exemplary claim involves method of authenticating e-mail messages using digital signatures.

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ABA Section of Intellectual Property Law Publishes The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board

Editor: Erika Harmon Arner

The ABA Section of Intellectual Property recently published The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board, authored by Finnegan attorneys for practitioners actively involved in managing the unique aspects of PTAB trials.  This comprehensive yet straight forward book is intended to provide practice-focused information including:

  • A quick reference for PTAB statutes and rules
  • Building patent trials into your litigation strategy
  • A detailed description of a PTAB trial from petition preparation to appeals to the Court of Appeals for the Federal Circuit
  • Clear references to supporting laws, rules, and regulations

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