Sharon Prost
How Judge Prost decides
Patterns drawn from this judge's own signed orders. Every observation links to the order it came from.
What persuades
On patent eligibility she applies the two-step framework rigorously: a claim directed to an abstract idea -- such as generating a content-based identifier and using it to manage data -- or to a product of nature is ineligible unless it adds an inventive concept, and reciting conventional computer steps or the mere isolation of a natural substance supplies none. She reads the claim for what it is directed to at its core.
“The claims are ineligible for patenting. We therefore affirm the judgment of invalidity.”
On obviousness she applies KSR's flexible standard: where two references address the same known problem and one supplies a known solution, that is itself a reason to combine them, and a review board errs by demanding an express suggestion in the prior art or by treating a reference's primary purpose as controlling. A newly appreciated property that naturally flows from an otherwise-obvious combination cannot confer patentability.
“For the foregoing reasons, we re- verse the Board’s findings related to the above-discussed limitations (which appear in claim 5 by virtue of its depend- ence from claim 4) and remand for further proceedings con- sistent with this opinion.”
Procedural preferences
She reads functional claim language strictly: a term that recites a function using a "nonce" word without disclosing corresponding structure invokes means-plus-function treatment, and if the specification discloses no algorithm or structure to perform the claimed function, the claim is indefinite. Claim scope must be pinned to what the specification actually discloses.
“We have considered Fintiv’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm.”
On Article III standing she keeps the inquiry tied to the actual state of rights: a patent owner retains an exclusionary right sufficient for injury in fact unless it has transferred away all exclusionary rights, and an unexercised option to assign or a lender's non-exclusive license does not, by itself, strip a patentee of standing.
“Because IT has constitutional standing, we reverse and remand.”
Cautions
She enforces reasoned decisionmaking on the tribunals she reviews: a review board must actually address the disputed claim limitations and engage the parties' arguments, and analysis that is conclusory or that mischaracterizes a party's position precludes meaningful appellate review and will be vacated and remanded.
“For the reasons set forth above, we affirm in part, vacate in part, and remand this case to the Board for the limited purpose of addressing the surface-area limitations of claims 1, 9, and 13.”
She polices the boundaries of issue preclusion across differing burdens of proof: fact findings a review board makes under the preponderance-of-the-evidence standard cannot be given preclusive effect in a district court, where invalidity must be proven by clear and convincing evidence, so importing those findings to short-circuit a trial is error.
“We have considered Cherry’s remaining arguments and find them unpersuasive. For the foregoing reasons, we vacate the district court’s judgment and remand.”
Signed rulings
A grounded sample of orders signed by this judge, with the verbatim dispositive language.
“We have considered Fintiv’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm.”
“We have considered Cherry’s remaining arguments and find them unpersuasive. For the foregoing reasons, we vacate the district court’s judgment and remand.”
“We vacate and remand the district court’s determination of nonobviousness for proceedings consistent with this opinion. We affirm the court’s determination on indefiniteness.”
“The claims are ineligible for patenting. We therefore affirm the judgment of invalidity.”
“For the reasons above, we affirm the district court’s judgment awarding attorneys’ fees.”
“We have considered Bot M8’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm.”
“For the foregoing reasons, we re- verse the Board’s findings related to the above-discussed limitations (which appear in claim 5 by virtue of its depend- ence from claim 4) and remand for further proceedings con- sistent with this opinion.”
“For the reasons set forth above, we affirm in part, vacate in part, and remand this case to the Board for the limited purpose of addressing the surface-area limitations of claims 1, 9, and 13.”
“For the foregoing reasons, we affirm the Board’s holding that claims 1–10, 12, and 14–31 of the ’431 patent are unpatentable and claims 11 and 13 were not shown to be unpatentable.”
“we affirm the Board’s determination that claims 1–7, 10–20, 23–26 of the ’765 patent, claims 1–3, 5–7, 10–16, 18–20, 23–30 of the ’142 patent, and claims 1–10, 12–14, 16–28, 30–32, and 34–37 of the ’007 patent are unpatentable. We reverse the Board’s determination that claims 4 and 17 of the ’142 patent and claims 11 and 29 of the ’007 patent are not unpatentable.”
“For the foregoing reasons, we affirm the Board’s conclusion that claims 7–13 and 17 are unpatentable.”
“We affirm the Board’s claim construction and decision as to claims 6, 17–19, and 21. We vacate the Board’s determination as to substitute claims 27, 28, and 31 and remand for further proceedings.”
Put Judge Prost's record to work
Ezel drafts and answers grounded in this exact profile: how Judge Prost actually rules, not a generic AI guess.
Opens in Ezel Pro. Every answer is grounded in Judge Prost's own signed orders and cites them.