Posts in Patentability


Federal Circuit says Secondary Considerations Not Part of Prima Facie Obviousness Analysis

Objective indicia must be evaluated before drawing an ultimate conclusion on obviousness, but are not necessarily part of a prima facie “motivation-to-combine” analysis. To prove inequitable conduct …

Crossing the Chasm: Avoiding and Surviving the PTAB

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of …

USPTO, PTAB refuse to follow Supreme Court Nautilus decision

The PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite …
By Gene Quinn
20 days ago 79

Board cannot shift burden of proving patentability to applicant, must articulate reasoning

The Federal Circuit vacated and remanded the Board’s decision, finding that it “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly …

Federal Circuit upholds CBM instituted in conflict with Unwired Planet decision

The U.S. Court of Appeals for the Federal Circuit issued a decision in Return Mail, Inc. v. United States Postal Services (USPS), which affirmed a finding …
By Steve Brachmann
25 days ago 5

Federal Circuit says computer memory system claims patent eligible, not abstract

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice …
By Gene Quinn
1 month ago 45

Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s …

Federal Circuit invalidates another patent upheld at PTAB after IPR

The Federal Circuit issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation, which ought to be completely unnerving to every owner of a U.S. patent …
By Steve Brachmann & Gene Quinn
2 months ago 11

The Problem of Obviousness

The overly inclusive nature of obviousness interpretations has led to problems. First, with an overly broad view of obviousness, patent applicants are encouraged to flood patent examiners …
By Neal Solomon
2 months ago 14

The Problem of Reducing Patentability to Novelty

Ironically, judicial decisions on patent eligibility tend to depend on inventiveness, with tests of originality that tend to refer to novelty, reducing the issue of patentability to …
By Neal Solomon
2 months ago 37

Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems

Over the past few months, several of the major intellectual property organizations have developed proposed legislative fixes to patent subject matter holdings by the courts. The American …
By Robert Stoll
2 months ago 62

Chinese President Xi Jinping says infringers should be punished and pay a heavy price

“Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” Xi said. At a time when President Xi is actively moving China’…
By Steve Brachmann & Gene Quinn
2 months ago 10

The PTAB: Number One Enemy of Inventors

When we apply for a patent, we are sharing our secret, our discovery, with the world. In exchange for sharing our secret we are promised 20 years of …
By Josh Malone
2 months ago 46

Thoughts From the Amtrak: Leaps of Faith and the U.S. Patent System

All too often I’m reminded that today’s American patent system is more droit du USPTO than it is the system for the innovative masses as …
By Steve Brachmann
2 months ago 18

House IP Subcommittee holds yet another one-sided hearing on bad patents and patent trolls

House IP subcommittee chair Rep. Darrell Issa (R-CA) led off the hearing by discussing the large number of interests who are often on Capitol Hill to discuss …
By Steve Brachmann
2 months ago 29