Here’s the latest.

USPTO Says Interested Party Rulings Aren’t ‘Shenanigans’

Reported by Tiffany Hu on Law360

The U.S. Patent and Trademark Office filed an intervenor brief on Monday with the Federal Circuit stating that the Patent Trial and Appeal Board’s refusal to require that Google be named as a real party interest in the board’s review of a mobile website patent challenged by RPX Corp. was proper. Referencing a U.S. Supreme Court decision in Cuozzo Speed Techs., LLC v. Lee, Publishing Technologies, who owns the patent, argued on appeal that the board engaged in “shenanigans” when it did not require Google to be named before instituting the review. Tiffany Hu summarizes the board’s conclusion.

The PTAB also shot down Publishing Technologies’ arguments that litigation against Google should have triggered a time bar and blocked the IPRs petitioned by RPX, which aims to reduce “frivolous and wasteful” patent litigation by buying and challenging patents.

Even though Google and RPX have a relationship, the board said Google didn’t influence or control RPX in a way that would make it an interested party.

Publishing Technologies appealed to the Federal Circuit citing several errors including an argument concerning how the board handled claim construction. The company also argued that RPX erred in not citing the district court litigation in its petitions.

Publishing Technologies said that leaving out the previous litigation, coupled with not listing Google as a real party-in-interest and the confidential nature of RPX’s member list, made it hard to investigate whether there was a time-bar issue at stake.

Guitar Pedalboard Patent Sent for New PTAB Review by Fed. Cir.

Reported by Blake Brittain on BloombergLaw

In a case concerning Pro Stage Gear LLC’s patent for a guitar pedalboard, the Patent Trial and Appeal Board rejected Donner Technology LLC’s argument that the patent was invalid as obvious based on prior art. The board found that the earlier patent that provides an improved electrical relay structure was not analogous prior art. According to Blake Brittain, the Federal Circuit concluded that although the relay structure was not within the same field as the guitar pedalboard, the inventions seek to address similar issues or purposes. In detailing the errors that the board made in its holding, the Federal Circuit found that Donner supported its argument with expert testimony, despite the board holding otherwise, and the board failed to identify and compare the purposes of the two patents. As noted by Brittain, the Federal Circuit concluded that “a reference can be analogous art with respect to a patent even if there are significant differences.”

That a person of ordinary skill in the pedalboard field may not understand the relay technology didn’t save the PTAB’s ruling. An ordinary artisan could consult a reference “even if she would not understand every last detail of that reference, so long as she would understand the portions of the reference relevant to solving her problem well enough to glean useful information,” the court said.

Heart Monitor Maker Asks High Court to Clear Eligibility Muddle

Reported by Matthew Bultman on BloombergLaw

A line of Supreme Court cases dating back to nearly a decade ago have created a muddled standard by which the appellate courts are to determine patent eligibility. In fact, last year the U.S. government told the Supreme Court it should revisit the issue in an “appropriate case.” InfoBionic Inc. believes its case, which involves a dispute over a patent that describes techniques for examining heartbeat data to detect certain conditions, would be the ideal case to provide such clarity. CardioNet LLC sued InfoBionic for patent infringement. The district court found the patent claims to be aimed at an abstract idea. The Federal Circuit, however, reversed and held that the claims were patent eligible because they focused on a specific procedure for improving existing technology. InfoBionic noted that the Federal Circuit had previously ruled that a different CardioNet heart condition-detection patent was invalid. Matthew Bultman describes how lawyers and judges are eager for the Supreme Court to bring clarity and consistency to patent eligibility jurisprudence.

The uncertainties have frustrated the Federal Circuit. Last month, Judge Kimberly Moore said the appeals court was “at a loss as to how to uniformly apply § 101,” referring to the section of patent law that sets the standard for patent eligibility.

“Just as a circuit split warrants review, so too does a fundamental rift in the nation’s patent court on the most fundamental of all patent issues—what is patentable to begin with,” InfoBionic wrote in its Nov. 2 petition.

According to InfoBionic, a consistent approach to § 101 would provide greater predictability in patent law for the public, innovators, and the investors.

“The longer the Federal Circuit is allowed to flounder,” [InfoBionic] added, “the greater the uncertainty, and the greater the risk patent monopolies will be abused to thwart innovation.”