USPTO Issues Guidance on Treatment of Applicant Admitted Prior Art in IPRs

USPTO_aapa_guidance_memo Director Iancu issued a memo setting forth the USPTO’s interpretation of 35 USC 311(b) as it pertains to statements by the Applicant regarding prior art.  In particular, Director Iancu states that “the basis” of every IPR must be “prior art consisting of patents or printed publications.”  Since admissions by Applicant regarding what is in […]

Federal Circuit says Basic Math ≠ Modification

Blackbird v Fitbit Background Blackbird Tech owns US patent number 6,434,212 directed to a device that counts an individual’s steps.  Based on the length and rate of those steps, the device provides information such as distance traveled and speed.  Fitbit and Wahoo Fitness each sought an inter partes review of claims 2,5 and 6.  PTAB […]

Federal Circuit reverses PTAB under the APA, remands so the agency can “do its job”

Alacritech v Intel Background Alacritech is the applicant of US patent number 8,131,880 (the ‘880 patent”) directed to apparatus for transferring packets to a host computer system.  In particular, the claims of the ‘880 patent recite an apparatus that offloads certain network related processing tasks from a host computer’s CPU to an “intelligent network interface […]

Federal Circuit upholds subject matter eligibility of “method of preparation” claims in rehearing of Illumina v. Ariosa Diagnostics

Illumina v Ariosa rehearing “Method of preparation” claims survive §101 challenge at the Federal Circuit

“Half-liquid” held indefinite by the Federal Circuit – IBSA v Teva

IBSA v Teva Though IBSA provided direct and indirect evidence that one of ordinary skill in the art would understand the term to be a synonym of “semi-liquid,” the Federal Circuit discounted it.  The Court instead found support in a prosecution history where the term was not directly at issue. Background IBSA is the assignee […]

2nd Circuit Court of Appeals vacates Tiffany’s $21M summary judgement win, and remands for trial

tiffany-co-v-costco-wholesale-corp, August 17, 2020 Background In November 2012, a Costco customer alerted Tiffany that she had seen engagement rings that appeared to be advertised as Tiffany Rings at a Costco store in Huntington Beach, CA.  Tiffany sent investigators to the store that observed two rings with signage nearby reading “639911/PLATINUM TIFFANY…” and “605880/PLATINUM TIFFANY…” Tiffany […]

After acknowledging that efforts to reform patent eligibility had stalled,

Senator Tillis urges USPTO to implement changes to identification of hypothetical examples in patent applications, as well as to improve transparency in ownership information.  Tillis-ltr-re-USPTO-admin-proposals1 So sad.

Catalog descriptions can afford enforceable copyright protection

But only if you register them first.  So says Fischer-v-Forrest (Nos. 18-2955-cv, 18-2959-cv, August 4, 2020, 2nd Circuit Court of Appeals) Background Fischer, the plaintiff-appellant, had invented a honey harvesting product called Bee-Quick.com, and registered a copyright for his website, including a brochure, on February 7, 2011.  Defendants-appellees, Sandra and Stephen Forrest and their mail […]

Validity of Ford design patents on replacement parts again upheld at the Federal Circuit

Ford v New World International, Appeal No. 2019-1746, June 22, 2020 At the district court level, New World argued that the holding in Best Lock Corp v. ILCO Unican Corp, 94 F.3d 1563 (Fed. Cir. 1996) applied, and that the claimed designs were invalid as “aesthetically functional”.  Ford argued that Best Lock was differentiable from […]

Amazon once again held strictly liable in products liability case

Bolger v. Amazon, Superior Court No. 37-2017-00003009-CU-PL-CTL, August 13, 2020 This time, in connection with its fulfillment of an order for a laptop battery, that subsequently exploded, severely injuring the Plaintiff Bolger.  Recall in Oberdorf v. Amazon, strict liability was found for an eye injury at the hands of a retractable leash, ordered on Amazon. […]