Andrew Liddell (US)

Subscribe to all posts by Andrew Liddell (US)

Federal Circuit Affirms PTAB’s Conclusion that Claims Reciting a Subsidy Are CBM Eligible

By Andrew Liddell (US) on May 20, 2016 Posted in Federal Circuit

In Blue Calypso, LLC, v. Groupon, Inc., the Federal Circuit concluded that the Board did not exceed its authority to conduct a CBM review of Blue Calypso’s challenged patents, and that the Board correctly applied the statutory definitions of “covered business method” and “technological invention” to the challenged claims. Nos. 2015-1396, -1397, -1398, -1399, -1401 (Fed. … Continue reading

New PTAB Rules Take Effect May 2, 2016

By Andrew Liddell (US) and Talbot Hansum (US) on April 28, 2016 Posted in Claim construction, Discovery, Experts, Institution decisions, Motions to amend

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding … Continue reading

Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information

By Andrew Liddell (US) on March 8, 2016 Posted in Federal Circuit, General

A unanimous Federal Circuit panel recently affirmed the PTAB’s decision denying a Petitioner’s request to file a motion to submit an expert report as supplemental information under 37 C.F.R. § 42.123(a). Redline Detection, LLC v. Star Envirotech, Inc., No. 15-1047 (Fed. Cir. Dec. 31, 2015). USPTO regulations permit a party to file a motion to submit supplemental information … Continue reading

Federal Circuit holds that PTAB is not bound by findings made in Institution Decisions

By Andrew Liddell (US) on February 12, 2016 Posted in Institution decisions

A unanimous Federal Circuit panel recently affirmed the PTAB’s judgment holding that the Petitioner failed to satisfy its burden of proving that the challenged claims of the patent were obvious. TriVascular v. Samuels, No. 15-1631 (Fed. Cir. Feb. 5, 2016). In so ruling, the Federal Circuit addressed whether the Board is bound by any findings … Continue reading

Federal Circuit rules it has no interlocutory jurisdiction on denial of motion to stay until CBM Review is instituted

By Andrew Liddell (US) on May 5, 2015 Posted in Federal Circuit, General

We have previously written about the emerging trend of district courts not granting motions to stay until IPR or CBM proceedings have been instituted. The Federal Circuit seemed to indirectly support that approach in its recent decision in Intellectual Ventures II LLC v. JPMorgan Chase & Co., in which it held that it lacked jurisdiction … Continue reading

An emerging norm: no stay until PTAB grants IPR petition

By Andrew Liddell (US) on March 27, 2015 Posted in General

Defendants have one year from the date of service of a complaint of patent infringement to file a request for inter partes review of the asserted patent. 35 U.S.C. § 315(b). In Trover Group, Inc., et al. v. Dedicated Micros USA, et al., 2:13-CV-1047 (E.D. Tex. March 11, 2015), two defendants filed an IPR petition … Continue reading