Category: Post-Grant Proceedings

PTO Designates Precedential its Athena Automation Decision on Assignor Estoppel in IPR

Author: Jason E. Stach
Editor: James D. Stein 

The PTAB designated as precedential its Institution Decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013). According to the Patent Office’s message announcing this new precedential designation, “[t]his decision determines that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows ‘a person who is not the owner of a patent’ to file a petition for inter partes review.” Continue reading

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Supreme Court to Decide Whether Final Written Decision Must Address Every Challenged Claim in an IPR Petition

Authors: James D. Stein 
Editor: Jason E. Stach

The Supreme Court granted certiorari to review the Federal Circuit’s decision in SAS Institute Inc. v. Lee, 825 F.3d 1341 (Fed. Cir. 2016). The question presented is whether the PTAB must issue a final written decision as to every claim challenged by the petitioner in an IPR petition or only as to some of the challenged claims. For more, see our coverage on Finnegan’s Federal Circuit IP Blog.

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Generic Claim Terms and Broad Specification Led to No CBM Review

Author: Jonathan J. Fagan
Editor: Aaron J. Capron

In Twilio, Inc. v. Telesign Corp., CBM2016-00099, Paper 13 (Feb. 27, 2017), the Board refused to institute a covered business method (CBM) review because the Petitioner failed to show that the patent at issue qualified to be a covered business method patent.

In this case, the patent at issue claimed a process for validating a registrant on a website, giving the registrant access to a “service,” and then sending the registration a notification upon the occurrence of a predetermined “notification event.” The specification disclosed both financial (e.g., a notification for a bank account withdrawal) and nonfinancial (e.g., news alerts sent to a phone) embodiments. Continue reading

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