Category: Post-Grant Proceedings

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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Wi-Fi One’s Supplemental Brief Urges En Banc Federal Circuit to Permit Appellate Review of PTAB Time-Bar Decisions

Authors: Robert K. High III
Editor: James D. Stein

Wi-Fi One has submitted its supplemental briefing in Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946, urging the en banc court to overturn its decision in Achates Reference Publishing Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), holding that that the PTAB’s decision regarding the timeliness of an IPR petition under 35 U.S.C. § 315(b) is unreviewable. In Achates, the Federal Circuit interpreted § 314(d), which makes the decision whether to institute “final and nonappealable,” as precluding this review. Continue reading

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Recent PTAB Decisions Further Illuminate Denial of Review Under 35 U.S.C. § 325(D)

Authors: Kevin J. Spinella
Editor: Aaron J. Capron

Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during prosecution of the patents at issue.

For example, in Kayak Software Corp. v. IBM Corp. CBM2016-0075, Paper 16 (Dec. 15, 2016), the PTAB declined to institute a covered business method (CBM) petition under § 325(d).

In their Petition, the Petitioners used the exact combination of references that had been applied by the USPTO Examiner. The Petitioners also introduced a new reference not previously cited during prosecution as an additional means to demonstrate the unpatentability of U.S. Patent No. 7,072,849. Continue reading

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