Archives: Patent

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Be Sure to Ask Your Scientists the Right Questions or Risk Losing Patent Protection

Welcome to the IP Intelligence Blog. We have merged the Copyright, Content, and Platforms blog into the IP Intelligence Blog to provide a single source for IP updates. We hope you enjoy our thought provoking posts on Intellectual Property related topics. Under the first-to-file patent system in place in the U.S. and globally, a publication … Continue Reading

POP Addresses IPR Printed Publication Standard

The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable … Continue Reading

Settlement Offers Can Be Used Against You (in a Patent Case)

Rule 408 of the Federal Rules of Evidence protects settlement communications.  The language of the rule is clear.  Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.”  However, there are exceptions to this rule.  And in a recent patent infringement case, the Federal Circuit … Continue Reading

Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from “Pharma Tech” Decision

Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal Circuit’s ruling in Pharma Tech Solutions Inc. v. Lifescan Inc. underscores the importance of carefully crafting claim amendments and arguments during prosecution … Continue Reading

Can the USPTO Recover the Salaries of its Legal Personnel in Challenges to Adverse Decisions?

Can the U.S. Patent and Trademark Office (USPTO) recover the salaries of its legal personnel in challenges to adverse decisions? Not surprisingly, the answer was a quick and unanimous no. More specifically, on Wednesday, Dec. 11, the U.S. Supreme Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel. The … Continue Reading

IPO’s “Gender Diversity in Innovation Toolkit” Aims to Address Disparities in Inventorship

While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office issued a report, “Progress and Potential: A Profile of Women Inventors on U.S. Patents” in … Continue Reading

Are Questions of Novelty and Nonobviousness Relevant to the Test for Whether a Patent Qualifies as a Covered Business Method Patent Under the AIA?

A covered business method (CBM) patent “does not include patents for technological inventions.” AIA § 18(d)(1). The United States Patent and Trademark Office (USPTO) promulgated a regulation that defines “a technological invention” as one in which (1) “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior … Continue Reading

Standing Necessary To Appeal an Inter Partes Review Decision

Article III of the Constitution grants the federal judiciary the power to decide “cases and controversies.”[1] “Standing,” the legal concept ensuring that federal courts review only cases and controversies, focuses on the party bringing suit to analyze the appropriateness and constitutionality of judicial review. The court-limiting effects of standing help ensure that the separation of … Continue Reading

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed To Support PTAB’S Finding of Obviousness

In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC) cancer.[1] The PTAB found that it would have been obvious to combine pharmaceutical references. The Federal Circuit, however, noted that the “asserted … Continue Reading

Proving That a Negative Claim Limitation Is Disclosed by the Prior Art: Takeaways From Two Recent Federal Circuit Opinions

Occasionally, a patentee will seek to define its invention with claims that recite a negative claim limitation – a specialized category of claim element that recites an element that is expressly and deliberately excluded.[1] By way of example, a claim directed to a stool with the limitation that the stool is “devoid of a backrest … Continue Reading

Director of PTO Requests Chevron Deference for Precedential Opinion Panel

The Federal Circuit recently asked the government to submit an amicus brief to address “what, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (‘POP’), and specifically to the POP opinion in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. … Continue Reading

Federal Circuit Confirms the Value of Design Patents Covering Replacement Parts

On July 23, 2019, the Federal Circuit departed from its utility patent-focused docket to deliver a precedential opinion relating to design patents in Auto. Body Parts Ass’n v. Ford Global Techns., LLC. At issue were the validity and enforceability of design patents on automotive repair and replacement parts. The case arose from a filing by … Continue Reading

To Cajole to Threaten: How Best to Curb Online Counterfeiting

I. Introduction The Trump administration, addressing efforts to curb online counterfeiting, has called for heightened collaboration, at times suggesting providing private parties with technological resources to help combat online counterfeiting. At the same time, the administration has bemoaned the lack of accountability among online third-party intermediaries and called for “clean[ing] up this Wild West of … Continue Reading

“Original Patent” vs. Written Description — A New Reissue Gauntlet?

In two opinions issued in the past few weeks, the Federal Circuit has shaken up two requirements of the reissue statute that most practitioners don’t think about much. 35 USC 251(a) authorizes reissue of a patent “for the invention disclosed in the original patent.” 35 USC 251(c) provides that “[t]he provisions of this title relating … Continue Reading

Exmark’s the Spot for Royalty Rate Apportionment

The language of the patent damages statute, 35 U.S.C. § 284, appears straightforward – “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer” (emphasis added). The common … Continue Reading

CAFC: Patents Enjoy a Presumption of Subject Matter Eligibility

Co-authored by: Phillip Wolfe In Cellspin Soft, Inc. v. Fitbit, Inc.,[1] the Court of Appeals for the Federal Circuit (CAFC) rendered an important decision declaring that the presumption of validity under § 282 includes the presumption that claims are patent eligible under § 101. Claimed Invention and Procedural Posture Cellspin sued several companies for infringing … Continue Reading

Return Mail May Make COFC More Attractive To Patent Holders

This article was first published by Law360 on June 19, 2019. Authored by: William Bergmann and Michael Anderson In 2011 the Leahy-Smith America Invents Act created three new types of post-issuance proceedings to challenge patent validity: inter partes review,[1] post-grant review[2] and covered-business-method review.[3] These proceedings have proven to be popular avenues to challenge patent … Continue Reading

The Federal Circuit Deals Another Blow to Diagnostic Method Patents

In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation between protein levels and a disease state. Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL 1452697, at … Continue Reading

Federal Circuit Holds That Claims Directed to Methods of Treating Pain in a Renally Impaired Patient Are Patent-Eligible Under Section 101

For the second time in as many weeks, the Federal Circuit has reversed a district court’s finding of patent ineligibility under Section 101 in the life science space, this time concluding that claims directed to methods of treating pain in renally impaired patients are patent-eligible. In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., the … Continue Reading

The Federal Circuit Opens the Door Wider for the Subject Matter Eligibility of Methods of Treatment, Compositions and Methods of Manufacturing

“We live in a natural world, and all inventions are constrained by the laws of nature . . . we must be careful not to overly abstract claims when performing the Alice analysis.”[1] These are the promising words from the Federal Circuit in its recent decision in Natural Alternatives v. Creative Compounds, in which the … Continue Reading

Federal Circuit holds that claims directed to diagnosing neurotransmission or developmental disorders are invalid for failing to recite patent eligible subject matter

In Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC,[1] the Federal Circuit affirmed the district court’s ruling that claims covering methods for diagnosing neurological disorders by detecting autoantibodies are directed to a natural law together with conventional steps, and are therefore invalid under 35 U.S.C. § 101. Although the claims at issue were said to … Continue Reading

PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim

In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged.  The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a … Continue Reading
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