Invalidating patent


, Judge Sally Medley asked counsel how the Board could confirm the patentability of a patent claim, if the claim is invalid under § 112: JUDGE MEDLEY: What if we get involved in the trial and we determine, “Hey, we can’t figure out what these claims mean.” . if we can’t figure out what a claim is, you know, I think that gives us the authority to enter [a] patentability determination with respect to the claim[.] . The AIA fundamentally changed the patent laws and patent system of the United States in an effort to harmonize the patent laws of the United States with the patent laws of other industrialized countries. Post-Grant Review The first procedure made available by the AIA is called “post-grant review” (PGR). A CBM patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. The PTAB panel held that each of the challenged claims involved “the use of an abstract idea: determining a price using organizational and product group hierarchies, which are akin to management organizational charts.” , slip op. The panel found that although the claims were drafted to include computer-hardware limitations, the underlying process that was implemented on such hardware could also be performed using pen and paper. The PTAB therefore concluded that Versata’s claims did not add any meaningful limitations beyond the recited abstract idea and acted merely to preempt the abstract idea.

“Useful” in that context does not mean merely relevant or admissible; instead, in the context of factor one, “useful” means favorable in substantive value to a contention of the party moving for discovery.

In contrast, , the Board refused to acknowledge petitioner’s argument that a claim lacked antecedent basis.

For example, the Board that “it is permissible [for petitioner] to argue.

authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112. 318(a) says the Board can issue a final written decision with respect to the patentability.

However, this does not mean that the Board is prohibited from invalidating patent claims under § 112 in an IPR.

However, the Board has considered§ 112 grounds in deciding motions to amend. that Patent Owner’s proposed substitute claims are unpatentable under 35 U.

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