Archives: Patent

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The Supreme Court Again Declines to Address the Written Description Standard

Photo of Ron KernBy Ron Kern on Posted in Patent
Supreme Court building, Washington, DCWithout any comments, the Supreme Court has denied Juno Therapeutics’ Petition for Rehearing, which requested that the Court hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC. Juno filed its petition after the Federal Circuit held that Juno’s claims were invalid because the patent at issue “does not disclose … Continue Reading

Claim Terms Are Not Necessarily Interpreted by Patents Incorporated by Reference

Photo of Scott ConleyBy Scott Conley on Posted in Patent
Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. 2022). The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference. The patents at issue are directed to systems and methods for detecting computer viruses in a Downloadable. A … Continue Reading

Juno Therapeutics Requests That the Supreme Court Wait to Make a Decision on Its Written Description Question Until Amgen’s Enablement Case Is Resolved

Photo of Ron KernBy Ron Kern on Posted in Patent
Juno Therapeutics (Juno) has filed a Petition for Rehearing with the Supreme Court, requesting that the Court vacate its previous order denying Juno’s petition for certiorari and hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC. Just days after agreeing to review the scope of the enablement requirement in … Continue Reading

Supreme Court Denies Review of the Written Description Requirement

Photo of Ron KernBy Ron Kern on Posted in Patent
Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno Therapeutics, Inc.’s (Juno) request to review the scope of the written description requirement. Interestingly, both cases involved similar questions – whether the respective portion of 35 U.S.C. §112(a) is governed by … Continue Reading

Federal Circuit Develops the ‘At Once Envisage’ Standard of Anticipation and Affirms the Importance of Specialized Considerations in the Chemical Arts

Photo of Michael Schwartz Ph.D.By Michael Schwartz Ph.D. on Posted in Patent
Anticipation of a claim generally requires that a single prior art reference explicitly discloses each and every claim element.[1] However, absent an express teaching in the prior art, a claim may also be anticipated if it is directed to a member of a limited class that a person of ordinary skill in the art would … Continue Reading

Federal Circuit: AI Cannot Be a Named ‘Inventor’ Under the Patent Act

Photo of Phillip WolfeBy Phillip Wolfe on Posted in Patent
On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia rulings. The Federal Circuit concluded that the Patent Act requires an “inventor,” … Continue Reading

Close Case for Non-obviousness of Pharmaceutical Formulations — Adapt Pharma v. Teva Pharma

Photo of Scott ConleyBy Scott Conley on Posted in Patent
In Adapt v. Teva, the Federal Circuit affirmed the district court’s findings that methods of administering a naloxone nasal spray formulation were invalid as obvious. The decision, which the Court notes was a “close case,” reminds us how difficult it is to show non-obviousness of pharmaceutical formulations and their use. The patents at issue relate … Continue Reading

Federal Circuit Requires Prior Art Be Analogous for Anticipation of Design Patents

Photo of Jennifer M. KurczBy Jennifer M. Kurcz on Posted in Federal Circuit, Patent, Patents
Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. … Continue Reading

Federal Circuit Hints at Easier Service of Process on Foreign Defendants

Photo of Cory BarnesBy Cory Barnes on Posted in Federal Circuit, Intellectual Property, Patent, Patents
In a recent decision, In re: OnePlus Technology (Shenzhen) Co., Ltd., Case. No. 21-165, Dkt. 20, the Federal Circuit denied China-based smartphone maker OnePlus’ petition for mandamus seeking to direct a Western District of Texas court (Judge Alan Albright) to dismiss the five underlying patent infringement actions for insufficient service of process. The Federal Circuit … Continue Reading

Courts Rule That AI Inventorship Can Rust in Peace

Photo of Alaina J. LakawiczBy Alaina J. Lakawicz on Posted in Federal Circuit, Patent, Patents, USPTO
On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no. The Patent Applications Plaintiff Stephen Thaler, Ph.D., is the owner of a Device … Continue Reading

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

Photo of Kevin WallacePhoto of Nancy R. FrandsenBy Kevin Wallace and Nancy R. Frandsen on Posted in Music Industry, Patent, Patents, Trademark, USPTO
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading

“Teaching Away” – A Change To This Historically Inconsistent Doctrine

Photo of Phillip WolfeBy Phillip Wolfe on Posted in Patent
Teaching away is an important concept when considering the obviousness of a patent claim. The Federal Circuit’s recent decision in Chemours v. Daikin[1] makes it easier to find that a reference teaches away from an invention, potentially increasing the difficulty of invalidating a patent claim for being obvious. There, the Circuit reversed the Patent Trial … Continue Reading

Federal Circuit Disregards ‘Manipulative Activities’ of Plaintiffs in Deciding Venue Transfer

Photo of Jeffrey LyonsBy Jeffrey Lyons on Posted in Patent
The U.S. Court of Appeals for the Federal Circuit recently issued a precedential opinion discussing plaintiffs’ attempts to influence venue through reliance on a licensing agreement that purported to limit where a patent infringement suit “might have been brought.” See In re Samsung Electronics Co., Case Nos. 2021-139, 2021-140 (Fed. Cir. June 30, 2021). In … Continue Reading

Can a Plaintiff in the United States Recover Foreign Patent Damages?

Photo of Michael GannonBy Michael Gannon on Posted in Patent
In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s … Continue Reading

2020 Patent Litigation: Year in Review

Photo of Derek FreitasBy Derek Freitas on Posted in Patent
2020 was a year of turmoil and unexpected events. While many businesses struggled throughout the year, patent litigation experienced an uptick across the board. According to Docket Navigator, 2020 was the first year to see an increase in the total annual number of patent cases since 2015.[1] Compared to 2018 and 2019, this past year … Continue Reading

Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

Photo of Charles CarsonBy Charles Carson on Posted in Patent
In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review … Continue Reading

Baked-In Apportionment

Photo of Jared BrandyberryBy Jared Brandyberry on Posted in Patent
In Vectura, the Federal Circuit recently reiterated that the entire market value of an accused multicomponent product may serve as the royalty base if the patent damages analysis is built on sufficiently comparable licenses. Vectura Limited v. Glaxosmithkline LLC, 981 F.3d 1030, 1040-1042 (Fed. Cir. 2020). Pursuit of the entire market value of a multicomponent … Continue Reading

Election Ballot Verification – A Patent Subject Matter Eligibility Analysis

Photo of Gabriel ApplegateBy Gabriel Applegate on Posted in Patent
In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents before opening their checkbooks. Interestingly, a Federal Circuit case from 2018, Voter Verified, Inc. v. Election Systems & Software, invalidated issued … Continue Reading

The Sun Has Set on CBM Review

Photo of Jennifer M. KurczPhoto of Alaina J. LakawiczBy Jennifer M. Kurcz and Alaina J. Lakawicz on Posted in Patent
Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge weak patents, i.e., patents that should not have been issued in view of the Supreme Court’s Bilski … Continue Reading

Justice Ginsburg’s Dissents – in Patent Law

Photo of Jason HoffmanBy Jason Hoffman on Posted in Patent
As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law? From Markman v. … Continue Reading
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