Tag Archives: Trial Institution

FEDERAL CIRCUIT FINDS A TECHNOLOGICAL INVENTION IN SIPCO’S TELECOM PATENT AND REVERSES PTAB DECISION THAT THE PATENT IS SUBJECT TO CBM REVIEW

By Reza Mollaaghababa
Under the administrative trial rules of the America Invents Act (AIA) a patent is eligible for covered business method (CBM) review if it only claims “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” 37 C.F.R. 42.301(a). Notwithstanding, such a patent is exempt from CBM review if it includes a “technological invention.” Id.

In determining whether a patent includes a technological invention for the purposes of CBM review, U.S. Patent Office rules require the Patent Trial and Appeal Board (PTAB) consider “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution.” 37 C.F.R. 42.301(b).

In SIPCO LLC v. Emerson Electric Co. (IPR 2017-0001), the PTAB concluded that SIPCO’s U.S. Patent No. 8,908,842 was not excluded from CBM review under the statutory “technological exception.” The CAFC disagreed and vacated the PTAB’s decision. Continue reading →

PTAB INCREASINGLY USING ITS DISCRETION TO DECLINE IPR INSTITUTIONS

By Reza Mollaaghababa

Under 35 U.S.C. §314(a), the PTAB has discretion to deny institution of an inter partes review. Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (”[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion”).  The PTAB is increasingly relying on its discretion to deny institution of IPR challenges to patents.  In some cases, the PTAB has denied institution of a follow-on petition that presented substantially similar grounds as those presented in an earlier petition, even when filed by a different petitioner.  In other cases, the PTAB has denied institution of an IPR challenge reasoning that institution in view of the advanced stage of a parallel district court trial would not be efficient use of the Board’s and the court’s resources. In other cases, the PTAB has denied institution in cases where it deemed only a small subset of petitioner’s arguments would be likely to establish invalidity of challenged claims. Continue reading →