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Category Archives: Patent Eligibility

I Say Yes, You Say No: PTAB Articulates Different Standards for Determining Whether a Printed Publication Was Publicly Available

Ex parte Grillo-Lopez, Appeal No. 2018-006082 (Jan. 31, 2020)

On April 7, 2020, the PTAB designated its January decision in Ex parte Grillo-Lopez (“the Decision”) as precedential. In the Decision, the Board held that patent examination and IPR proceedings have different standards for establishing a prior art printed publication, with the petitioner in an IPR facing a higher burden of showing that a reference was publicly accessible. Having been designated as precedential, the Decision is now binding authority in all USPTO ex parte proceedings. Continue reading…

Indefinitely Not: Federal Circuit Rules that the PTAB Cannot Cancel Claims for Indefiniteness During an IPR

Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal Nos. 2019-1169, 2019-1260 (Fed. Cir. Feb. 4, 2020)

The Federal Circuit has held that the Patent Trial and Appeal Board may not cancel claims as indefinite in an IPR proceeding.

In 2016, Prisua Engineering Corp. sued Samsung Electronics America, Inc. and other Samsung entities for infringement of U.S. Patent No. 8,650,591 (“Video Enabled Digital Devices for Embedding User Data in Interactive Applications”). Samsung then petitioned the PTAB for inter partes review of the ‘591 patent, asserting that claims 1–4, 8, and 11—which are directed to methods and apparatuses for “generating a displayable edited video data stream from an original video data stream”—were unpatentable.

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A User’s Guide to Prior Art: PTAB Holds That a User Manual May Qualify As a Printed Publication

Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01437 (Jan. 23, 2020)

In a recent inter partes review decision invalidating a patent disclosing systems and methods for filtering network data transfers, the Patent Trial and Appeal Board held that a user manual was a publicly available printed publication that qualified as prior art.

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No Do-Overs: Federal Circuit Denies Unsuccessful IPR Petitioner’s Request for a New Hearing in Light of Arthrex

Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir. Jan. 28, 2020)

The Federal Circuit has held that a party that petitioned for inter partes review before the Patent Trial Appeal Board and subsequently obtained an unfavorable ruling cannot now invoke Arthrex, Inc. v. Smith & Nephew, Inc. to vacate and remand the Board’s decision for a new hearing before a differently constituted panel.

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It’s All Relative: Federal Circuit Upholds Invalidity of 23andMe’s Genetic Ancestry Testing Patent For Claiming a Rule of Nature

23andMe, Inc. v. DNA, LLC et al., Appeal No. 2019-1222 (Fed. Cir. Jan. 9, 2020)

The Federal Circuit has denied a petition for rehearing en banc brought by 23andMe, leaving in place the court’s earlier ruling on October 4, 2019, that the company’s patent, which describes a method for identifying the degree of relationship between two individuals based on their DNA samples, was invalid for claiming a rule of nature.

23andMe’s patent, U.S. Patent No. 8,463,554 (“Finding relatives in a database”), covers a method of comparing two individuals’ recombinable DNA sequence information—rather than the whole genome—in order to determine a relative relationship. According to 23andMe, the ‘554 patent explains that only relatives will share long stretches of genome regions where their recombinable DNA is completely or nearly identical. 23andMe sued Ancestry in the U.S. District Court for the Northern District of California, alleging that it was infringing the ‘554 patent with its AncestryDNA kits, which feature services to identify relatives who share parts of their DNA.

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