Apple, Inc. v. Ameranth, Inc., Case Nos. 2015-1703, 2015-1704, 2015-1792, 2015-1793 (November 29, 2016) (precedential) (3-0) Patent Nos. 6,384,850, 6,871,325, and 6,982,733

Key point(s):

• When determining whether to institute a Covered Business Method (CBM) review and whether a patent is for a technological invention, the following considerations are made on a case-by–case basis:

           1. whether the claimed subject matter as a whole recites a                                  technological feature that is novel and unobvious over the prior art;                  and

           2.  solves a technical problem using a technical solution.

• If the second prong of the CBM technological invention analysis is satisfied, the first prong need not be addressed to support a finding that a patent is not a technological invention.

Micrografx, L.L.C. v. Google Inc., Case No. 2015-2090 (November 29, 2016) (nonprecedential) Patent No. 5,959,633

Key point(s):

• The harmless error rule applies to appeals from the Patent Trial and Appeal Board.

Micrografx, L.L.C. v. Google Inc., Case Nos. 2015-2091, 2015-2092 (November 29, 2016) (nonprecedential) Patent Nos. 6,057,854 and 6,552,732

Key point(s):

• All that is required for a software reference to be anticipatory, is that the reference satisfy the claim limitations at some point during implementation.

Microsoft Corp. v. Enfish, L.L.C., Case Nos. 2015-1734, 2015-1736, 2015-1737, 2015-1738, 2015-1739, 2015-1740, 2015-1741, 2015-1742, 2015-1816, 2015-1817, 2015-1818, 2015-1819 (November 30, 2016) (nonprecedential) Patent Nos. 6,151,604 and 6,163,775

Key point(s):

• Arguments regarding motivation to combine references need to be supported by clearly articulate reasons why a person having ordinary skill in the art would have been motivated to combine the references, rather than by a broad assertion that motivation exists without more.
• In order for an issue to be preserved for appeal from the PTAB, the issue must be raised with sufficient specificity and clarity that the Board is aware that it must decide the issue.

Dako Denmark A/S v. Leica Biosystems Melbourne Party Ltd., No. 2015-1997, December 2, 2016 (Non-Precedential) Patent Nos. 7,217,392 and 7,553,672

Key point(s):

• A motivation to combine can be found in any need or problem known in the field of endeavor at the time of the invention and addressed by the patent.
• Access to business plans and filing a subsequent patent application is insufficient to establish copying.