THE PTAB-aided USPTO has effectively cut down the number of software patents and sent out the message/signal that such patents are no longer worth pursuing, especially not in courts. PTAB is very popular among technology firms because it helps protect them from lawsuits of trolls and other types of nuisance litigation.
A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined. In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017) (non-precedential), the court affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability, in an Inter Partes Review proceeding, of certain claims of U.S. Patent No. 6,904,796 (and, while not discussed in this post, also vacating the PTAB’s denial of the patent owner’s motion to amend certain claims). The court agreed with the PTAB that there was a sufficient motivation to combine references to achieve a single tool for activating tire sensors where different references taught each of the various functionalities now claimed in a single tool.
Petitioner Visionsense Corp. is challenging the '190 patent on four grounds as being anticipated under 35 U.S.C. €§ 102(b) (ground 1) or as obvious under 35 U.S.C. €§ 103(a) (grounds 2, 3, and 4). View the petition here. Administrative Patent Judges Hyun J. Jung (author), Michael L. Woods, and Amanda F. Wieker issued a decision instituting inter partes review of whether claims 1–3 are unpatentable under 35 U.S.C. €§ 103(a) over Little, Flower I, and Flower II; whether claims 1–3 are unpatentable under 35 U.S.C. €§ 103(a) over Flower I, Flower II, and Little or Goldstein; and whether claims 1–3 are unpatentable under 35 U.S.C. €§ 103(a) over Jibu, Flower I, and Little or Goldstein.
On November 21, 2017, PTAB Chief Judge Ruschke issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products." As we reported at the time, the Federal Circuit in Aqua Products determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings. However, that en banc Court was highly fractured, with five separate opinions joined by differing collections of judges. Therefore, most of the opinion could be described as "cogitations," as Judge O'Malley had put it.
PTAB: Increasingly difficult to overturn abstract idea rejections on appeal
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The latest data from Anticipat show that the effects of #AliceStorm are beginning to stabilize at the PTAB. At a webinar over the summer, we presented data on the reversal rates of abstract idea rejections. Month-to-month, we presented on a highly volatile, but overall low reversal rate for abstract ideas of about 17%. Now with several more months of data, the reversal rate appears to have stabilized around a lower overall reversal rate of 16%. See chart below.
Allergan announced that it lost its patent appeal in its attempt to protect its Combigan eye drug from generic competition posed by Novartis’ Sandoz division.
According to Allergan, the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the Eastern District of Texas’ earlier decision that the Sandoz generic rival did not infringe two of Allergan’s patents and reversed a decision on a third patent in favor of Novartis.