Federal Circuit Narrowly Concludes Challenger Must Show Unpatentability in Aqua Products
An en banc panel of the Federal Circuit concluded that the challenger must show that amended claims in an inter partes review (IPR) are unpatentable, reversing the USPTO rule that the patent owner must show that an proposed amendments were patentable. The majority decision also held that “Congress made clear that patent owners may propose amendments to their patents as of right at least once in an IPR.” On the issue of whether deferrence should be given to the USPTO rules regarding amendments, the decision also concluded that "Because a majority of the judges participating in this en banc proceeding believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the Patent and Trademark Office (“PTO”) to which this court must defer ..." Read the very lengthy decision here.
Federal Circuit Affirms Alice Invalidity in Smart Sys. Innovations v. Chicago Transit Authority
The Federal Circuit affirmed a district court finding that the claims of the patents in Smart Sys. Innovations v. Chicago Transit Authority were invalid under Alice as directed to an abstract idea. One of Smart System Innovations (SSI) arguments was that the claims were not abstract because they were directed to a concrete field, mass transit and mass transit turnstiles. The court responding Affinity Labs and Alice:
But, as we have said before, “merely limiting the field of use of the abstract idea to a particular . . . environment does not render the claims any less abstract.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); Capital One Fin., 850 F.3d at 1340 (same). Indeed, that the steps recited in the Asserted Claims are “necessarily” performed “in the physical, rather than purely conceptual, realm . . . is beside the point.” Alice, 134 S. Ct. at 2358 (internal quotation marks and citation omitted).
1. A method of using a bank card as an identifying token for time-based mass transit fare products, without using writeable memory on the bank card, the method comprising:
Federal Circuit Affirms Non-Obviousness in Securus v. Global Tel*Link
The Federal Circuit affirmed the Patent Trail and Appeal Board's finding of non-obviousness of the 7,853,243 patent in Securus Technologies, Inc. v. Global Tel*Link Corp. In the inter partes review, Securus asserted that a combination of Susen and Gainsboro references disclosed the claimed invention.
The court agreed with the PTAB that no reason for combining the references had been articulated, finding "Securus’ case against the patentability of the claimed invention amounts to 'mere conclusory statements,'which fall short of 'some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.' KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, Securus failed to explain how or why the skilled artisan would combine the teachings of Susen, which are generally directed to authorizing telephone access through voice recognition in corporate settings, with the teachings of Gainsboro, which are generally directed to listening in on and reviewing phone conversations in penal settings, to arrive at the claimed invention.3 We agree with the Board that a broad characterization of Susen and Gainsboro as both falling within the same alleged field of 'telecommunications monitoring and control,' without more, is not enough for Securus to meet its burden of presenting a sufficient rationale to support an obviousness conclusion."
1. A method for restricting access to a public telephone network using a telephone call management system, said method comprising the steps of:
China Adopts New Rules for Accelerating Patent Examination
The State Intellectual Property Office of China (SIPO) has adopted new rules for accelerating patent examination. Applications may be prioritized for earlier examination in fields that are government priorities, that experience rapid progress, or that are being exploited by the applicants. Priority is also avaiable for inventions that are filed in China first and then in other jurisdictions.
PTAB Allows Schaeffler Technologies to Amend Claims in IPR
The Patent Trial and Appeal Board (PTAB) has allowed Schaeffler Technologies to amend its claims after finding the original patent claims to be obvious in a inter partes review (IPR) initiated by Valeo North America. If other panels allow similar amendments, the options in IPR for patent holders will be greatly expanded.