REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. (Fed. Cir. 2015) (P) – Timeliness and relevancy alone are not sufficient to ensure entry of supplemental information for IPR

by Steve Driskill | Dec 31, 2015 | [sub] inter partes review, PTO Procedure

Timeliness and relevancy alone are not sufficient to ensure entry under 37 C.F.R. § 42.123(a) of supplemental information for IPR proceedings where the information reasonably could have been submitted with the IPR petition itself. Here, for example, the later...

SIGHTSOUND TECHNOLOGIES, LLC v. APPLE INC. (Fed. Cir. 2015) (P) – Electronic sales are a financial activity that is subject to CBM review

by Steve Driskill | Dec 15, 2015 | [sub] covered business methods, PTO Procedure

The electronic sale of something, including charging a fee to a party’s account, is a financial activity that is subject to Covered Business Method (CBM) review. Here, for example, the sale of digital audio and video signals for a fee through telecommunications lines...

PROLITEC, INC. v. SCENTAIR TECHNOLOGIES, INC. (Fed. Cir. 2015) (P) – Proposed amendments during IPR must establish patentability over prior art from original prosecution

by Steve Driskill | Dec 4, 2015 | [sub] inter partes review, PTO Procedure

A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the...

IN RE HILL-ROM SERVICES, INC. (Fed. Cir. 2015) (NP) – A challenge to a Board decision as constituting a “new ground of rejection” must be raised in rehearing

by Steve Driskill | Dec 2, 2015 | [sub] appellate, PTO Procedure

The PTO’s rule requiring that any challenge to a Board decision as constituting a “new ground of rejection” must be raised in a request for rehearing to preserve it for review by the court system is not unreasonable and is in accordance with the principles of...

MCM PORTFOLIO LLC v. HEWLETT-PACKARD COMPANY (Fed. Cir. 2015) (P) – Inter partes review (IPR) does not violate Article III or the Seventh Amendment of the U.S. Constitution

by Steve Driskill | Dec 2, 2015 | [sub] inter partes review, PTO Procedure

The IPR system is a viable administrative procedure in so far as it does not violate Article III or the Seventh Amendment of the U.S. Constitution. Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is...

IN RE COMMONWEALTH SCIENTIFIC (Fed. Cir. 2015) (NP) – An applicant’s prosecution strategy does not bar claims that are otherwise permissible under § 135(b)(1)

by Steve Driskill | Nov 20, 2015 | [sub] interference, PTO Procedure

An applicant’s prosecution strategy does not bar claims provoking an interference that are otherwise permissible under § 135(b)(1). Here, for example, claims copied from another patent before the critical date in § 135(b)(1) but then canceled and only added-back five...