Posts Tagged: "sua sponte"

Vidal’s Latest Director Review Decision Finds Material Differences in Prior Art References Raised at PTAB

On March 30, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a decision on sua sponte Director review that vacated a decision of the Patent Trial and Appeal Board (PTAB), which had previously denied institution of inter partes review (IPR) proceedings brought by semiconductor company Wolfspeed. In her latest in a series of sua sponte decisions, Director Vidal ruled that the PTAB erred in determining that prior art asserted by Wolfspeed was essentially the same as other prior art asserted against the same Purdue University patent claims in previous IPR proceedings that were also denied institution by the PTAB.

Steve Brachmann

April 5, 2023

Federal Circuit: PTAB Failed to Provide Adequate Notice of Sua Sponte Claim Construction

In a precedential opinion authored by chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit today vacated and remanded six Patent Trial and Appeal Board (PTAB) final written decisions in inter partes review (IPR) proceedings filed by Intel that found Qualcomm’s patent claims 1–15, 17–25, and 27–33 of U.S. Patent No. 9,608,675 would have been obvious. While the CAFC agreed with the PTAB’s construction of one of the claims, which Qualcomm had challenged, it ultimately held that the Board violated Qualcomm’s procedural rights under the Administrative Procedure Act (APA) for failing to provide the company “adequate notice of and opportunity to respond to its sua sponte claim construction.”

Eileen McDermott

July 27, 2021

Judge Mayer Just Doesn’t Like Business Method Patents

Alexsam, Inc. v. IDT Corporation is a non-remarkable patent infringement decision with a remarkable dissent. What is noteworthy about the case is not the majority opinion, but the dissent by Judge Haldane Robert Mayer. Mayer’s dissent discusses why the patent is invalid under 35 U.S.C. § 101, which is curious because the 101 issue was not raised by the defendants during the appeal nor even mentioned during oral arguments. While Mayer’s dissent is not a binding opinion, if another judge on the panel signed on to Mayer’s reasoning then the patent would have been held invalid based on an issue not raised during the appeal.

Jon Muskin

June 11, 2013