Tag Archives: Justus Getty

PTAB Can Consider § 101 When Reviewing Amended Claims

The Patent Trial and Appeal Board has designated as precedential a decision holding that the Board may consider § 101 when evaluating the patentability of a patent owner’s proposed substitute claims in a motion to amend. The decision clarifies the impact of the Federal Circuit’s Aqua Products decision on the issue of subject matter eligibility of substitute claims. Continue reading PTAB Can Consider § 101 When Reviewing Amended Claims

Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board

On March 23, 2018, the U.S. District Court for the Northern District of California ordered a patent licensee to withdraw petitions to the Patent Trial and Appeal Board (“PTAB”) seeking to invalidate a licensor’s patents. The Court held that the forum selection clause of the patent license between the parties – which stipulated that “the parties agree…that disputes shall be litigated before the courts in San Francisco County or Orange County, California” – extinguished the patent licensee’s right to bring challenges against the licensed patents in the PTAB located in Alexandria, Virginia. Continue reading Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board