Patent Owner’s Challenge to Wayback Machine Evidence Fails

Authored by Brian S. Mudge

We have previously written about disputes over prior art used in an AIA patent trial. A recent case presented challenges to materials obtained from the Internet. The case, Johns Manville Corp. v. Knauf Insulation, Inc.,[1] involved a petitioner’s reliance on exhibits downloaded from the Wayback Machine as prior art. In its final written decision, the PTAB determined that Wayback Machine exhibits were sufficiently authenticated and reliable to withstand a motion to exclude. However, the Board’s ruling did not specifically address one aspect of the challenge relating to a party, Alexa Internet, which initially captured the Internet pages that were archived.

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PTAB Rules Dealer Show Catalog Fails to Qualify as Prior Art

Authored by Brian S. Mudge and co-authored by Dragan Plavsic

In a recent decision, the Patent Trial and Appeal Board held that a reference used to support each of the grounds for invalidity did not qualify as prior art. The case, GoPro v. Contour IP,[1] involved the Board’s analysis of whether a reference, the GoPro Catalog, was publicly accessible to persons of ordinary skill in the art. Because the Petitioner failed to establish that reference was publicly accessible to ordinary artisans, the PTAB rejected the instituted prior art challenges without reaching the merits of the obviousness grounds. The Board also denied the parties’ respective admissibility challenges to evidence relating to the GoPro Catalog.

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Tension in the PTAB: How to Determine Whether a Patent Claims a Covered Business Method?

Authored by Brian S. Mudge and Andrew D. Kasnevich
Congress enacted the transitional program for post-grant review of covered business method (“CBM”) patents by the Patent Trial and Appeal Board as a quick and cost-effective way to adjudicate the validity of business method patents. In determining whether to institute a patent trial, the PTAB normally decides, as a threshold matter, whether the challenged patent qualifies as a covered business method, i.e., whether the patent claims a method, or corresponding apparatus, that is used in the practice, administration, or management of a financial product or service. In the early stages of the program’s existence, the PTAB found a range of business methods and software patents eligible for CBM review.1

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CGH WINS RARE GRANT OF MOTION TO AMEND

Authored by Brian S. Mudge

In the brief history of AIA trials, the Board has granted only a handful of motions to amend — six at the time of the Supreme Court oral argument in Cuozzo. A recent decision by the Board has upped that number by one. The case, Google v. ContentGuard Holdings1, involved a motion to amend which also requested the Board’s opinion that the amended claim was substantially identical to the originally issued claim.

Key Takeaway: A patent owner who successfully amends a claim in an AIA trial can gain further advantage by also requesting a determination that the new claim is substantially identical to the original claim. With a new claim declared not only patentable but also of the same scope as the original claim, a patent owner can defeat arguments regarding intervening rights as to the amended claim.

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Patent Trial Program Emerges Intact From Supreme Court Row

Authored Brian S. Mudge

In its first decision addressing the post-grant patent trial program recently established by Congress, the Supreme Court in Cuozzo1 has given a resounding victory to the U.S. Patent & Trademark Office. Rejecting a challenge to the PTO’s handling of these new proceedings, the ruling confirms that the Office has broad powers to determine how the cases will be tried and the standards used to govern them. As a result, patent owners will continue to face a difficult path before the PTO in defending challenges to patent validity — one that, to date, has proven to be significantly more hazardous than the courts to patentees.

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