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Kevin Amendt is an Associate based in our Boston office.  His focus is IP law, including patent procurement and IP litigation. Kevin’s practice includes all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patentability, infringement, and invalidity analysis. He also assists on due-diligence projects and reexaminations.

The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be resolved on summary judgement.  The case is Berkheimer v. HP Inc., case number 17-1437, in the U.S. Court of Appeals for the Federal Circuit.

Continue Reading <i>Berkheimer v. HP Inc.</i>: Whether Claim Elements Are Well-Known, Routine, or Conventional Is a Question of Fact

Struggling to keep case law relating to subject matter eligibility organized?  In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.

Continue Reading Latest Tool in the Fight against <i>Alice</i>: USPTO Publishes a New Eligibility Quick Reference Sheet

On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.

A Tale of Two Standards

Under 35 U.S.C. § 112(b), the specification must conclude with “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention. This definiteness requirement “secure[s] to the patentee all to which he is entitled” and “apprise[s] the public of what is still open to them.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996).

During examination, the Patent Office applies the broadest reasonable interpretation of a claim and thereafter determines indefiniteness using the In re Packard standard, in which a claim is indefinite when it contains words or phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014)(per curium).

Continue Reading Am I Being Clear Enough? – PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward

Introduction shutterstock_304962401

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings. This change took effect on March 16, 2013. But despite over three and a half years since this change, little is known about this procedure as few have been filed.

Continue Reading Why No One is Talking About Derivation Proceedings

The Patent Trial and Appeal Board (“the Board”) recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.  In this ruling, the Board denies Petitioners’ IPR request under the estoppel provision in 35 U.S.C. § 315(e)(1), which prevents petitioners, real parties-in-interest and privies from challenging an already-adjudicated claim on grounds that were previously raised or could have been previously raised before the Board:

The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318 (a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (emphasis added)

The Dell decision presents a straightforward application of 35 U.S.C. § 315(e)(1).  In the ‘549 IPR, Dell petitioned for review of U.S. Patent No. 6,978,346 (“the ‘346 Patent”) based on claims 1-9 being obvious under 35 U.S.C. § 103 over the Mylex and Hathorn references.  In its decision, the Board explains that Dell had previously asserted both Mylex and Hathorn against the ‘346 Patent in Dell, Inc. v. Electronics and Telecommunications Research Institute, Case IPR2013-00635 (“the ‘635 IPR”).  Dell’s ‘635 IPR Petition challenged the ‘346 Patent claims on the following grounds: (1) claims 1–3 and 8 as obvious under 35 U.S.C. § 103(a) over Weygant and Mylex (’635 IPR Pet. 20–23); (2) claims 4 and 9 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and Serviceguard5 (’635 IPR Pet. 23–39); (3) claims 5–7 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and ANSI6 (’635 IPR Pet. 39–45); (4) claims 1–3 and 5–8 as anticipated under 35 U.S.C. § 102(b) by Hathorn (’635 IPR Pet. 45–60).  The Board instituted trial in the ‘635 IPR solely on the ground that claims 1-3 and 5-8 were anticipated under 35 U.S.C. § 102 by Hathorn, but ultimately held in its final written decision that these claims were not shown to be unpatentable based on Hathorn.

Continue Reading The PTAB Explores Estoppel in New Representative Decision