Knobbe/Martens: Intellectual Property Law

Bridget A. Smith

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"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

May 17, 2019 Bridget A. Smith

For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board.  And only five months into the year, change in 2019 has become more certain than ever.

Late last year, the PTAB revamped its standard operating procedures in a document known as Revised SOP2.  With these revisions, the PTAB created the “Precedential Opinion Panel” or “POP.”  The POP is tasked, in part, with rehearing matters of “exceptional importance” in pending trials and appeals.  By default, the POP members consist of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.

 

Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB

April 22, 2019 Bridget A. Smith and John Sganga

On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note.  The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a boilerplate forum selection clause in a licensing agreement can prevent a validity challenge at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB), even though the clause makes no mention of PTAB proceedings.

 

Legislators Propose “Section 101 Reform”

Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility.  The legislators supporting this proposal include Senator Thom Tillis (R-NC); Senator Chris Coons (D-DE); Rep. Doug Collins (R-GA-9); Rep. Hank Johnson (D-GA-4); and Rep. Steve Stivers (R-OH-15).

Banks Hate Cryptocurrency, But Are Filing Patents Anyway

August 31, 2018 Bridget A. Smith

Blockchain is a technological innovation underlying cryptocurrencies like Bitcoin. Given the importance of cryptocurrencies not only for buying and selling goods and services, but also as funding and investment vehicles, the underlying blockchain technology is obviously of interest in the fintech space.

MICROSOFT CORPORATION v. BISCOTTI, INC.

December 28, 2017 Albert J. Sueiras and Bridget A. Smith

Before Newman, O’Malley, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a skilled artisan might somehow combine to achieve the claimed invention.

MICROSOFT CORPORATION v. BISCOTTI, INC.

December 28, 2017 Albert J. Sueiras and Bridget A. Smith

Before Newman, O’Malley, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a skilled artisan might somehow combine to achieve the claimed invention.

Federal Circuit Holds That the PTAB May Consider Legal Conclusions of Obviousness by Expert Witnesses That Are Supported by Underlying Factual Findings

March 3, 2017 Diana E. Wade and Bridget A. Smith

The Federal Circuit held that the PTAB may consider legal conclusions of obviousness by experts, but the expert papers must make adequate factual findings and provide a satisfactory explanation as to determinations of obviousness in Icon Health and Fitness, Inc. v. Strava, Inc., No. 16-1475 (Fed. Cir. Feb. 27, 2017).  

Determining Patent Eligibility Pre-Claim Construction May Be Premature

November 17, 2016 Bridget A. Smith and Damien Howard

For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc.  In a divided opinion, the Federal Circuit reversed the district court and held Amdoc’s patent on “a system designed to solve an accounting and billing problem faced by network providers” to be patent eligible.

Software Patent Eligibility: Preemption Gets Starring Role at the Federal Circuit

September 30, 2016 Bridget A. Smith and Eric Zhou

The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s star turn might not come. 

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