Archives: Patent

Standing Necessary To Appeal an Inter Partes Review Decision

By Kevin Flynn on October 14, 2019 Posted in Patent

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

By Scott Feldmann on October 7, 2019 Posted in Patent

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

By Mark Einsiedel on September 25, 2019 Posted in Patent

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

By Bill DeVinney on September 24, 2019 Posted in Patent

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

Precedential Opinion Stressing That Design Patents Cover Articles of Manufacture

By Tayan Patel on September 18, 2019 Posted in Patent

In a case of first impression, the Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sept. 12, 2019). … Continue Reading

Federal Circuit Confirms the Value of Design Patents Covering Replacement Parts

By Lisa N. Collins and Erin Caldwell on September 5, 2019 Posted in Patent

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

By Robb Beckerlegge on August 13, 2019 Posted in Patent

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?

By Barry Bretschneider on August 5, 2019 Posted in Patent

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

By Jared Brandyberry on July 30, 2019 Posted in Patent

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

By Phillip Wolfe and Michael Stein on July 1, 2019 Posted in Patent

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 various claims of four … Continue Reading

Return Mail May Make COFC More Attractive To Patent Holders

By BakerHostetler on June 20, 2019 Posted in Patent

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

By Laura Gordon on April 11, 2019 Posted in Patent

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

By Ron Kern on March 29, 2019 Posted in Patent

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

By Ron Kern on March 18, 2019 Posted in Patent

“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

By Ron Kern on February 11, 2019 Posted in Patent

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

Supreme Court Unshrouds the ‘On Sale’ Bar as Applied to Secret Sales

By Erin Caldwell on January 25, 2019 Posted in Federal Circuit, Patent

This week, the Supreme Court issued a decision holding that a secret sale qualifies as prior art. At issue was whether the America Invents Act (AIA) changed the “on sale” bar to patentability to exempt secret sales as prior art.[1] The case, Helsinn Healthcare v. Teva Pharmaceuticals USA, arose out of agreements entered into by … Continue Reading

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

By David Farsiou on November 12, 2018 Posted in Patent

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

Additional Discovery of Clinical Trial Data in Inter Partes Review

By Timothy Doyle and David Farsiou on March 30, 2018 Posted in Patent

In Apotex, Inc. et al. v. Novartis AG (IPR 2017-00854, paper 47 dated Feb. 5, 2018), petitioner Apotex sought, and was granted, discovery of a Phase III clinical trial protocol from patent owner Novartis. The patent at issue in the IPR, U.S. 9,187,405, claims a method for treating relapses in relapsing-remitting multiple sclerosis by orally … Continue Reading

Core Wireless: Moving Beyond Eligibility as the Exception to the Exception?

By Brendan Clark on February 8, 2018 Posted in Federal Circuit, Patent

January was an exciting month for patent professionals still attempting to make sense of the fallout from the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision. Hot on the heels of its Jan. 10 decision in Finjan, Inc. v. Blue Coat Systems, Inc., the Court of Appeals for the Federal Circuit decided Core … Continue Reading

Finjan v. Blue Coat Systems: Attaching Security Profile to a Downloadable Is Patent Eligible

By Michael Stein on January 16, 2018 Posted in Federal Circuit, Patent

In Finjan v. Blue Coat Systems, the Court of Appeals for the Federal Circuit rendered a decision containing interesting rulings on patentable subject matter (affirming the District Court determination that certain claims were patent eligible) and reasonable royalty damages (vacating part of a jury verdict for failure to adequately apportion the royalty base). This article … Continue Reading

Patent Portfolio Management – a Team Approach to Patent Drafting

By Shannon McCue on January 8, 2018 Posted in Patent

On my drive to work, there was a trash bag on the freeway, then a box, and later a couple of bags flying around. I wondered where this garbage came from. There were a number of likely candidates: a small pickup truck loaded with miscellaneous junk, a dump truck and a large truck with a … Continue Reading

Strategic Use of a Reissue Application in the Context of an Inter Partes Review (IPR) Proceeding

By David Farsiou on January 2, 2018 Posted in Patent

In Legend3D, Inc. (Petitioner) v. Prime Focus Creative Services Canada Inc. (Patent Owner), Case IPR2016-00806, the Patent Trial and Appeal Board (Board) lifted a stay of a pending reissue application following a Final Written Decision, thereby allowing the Patent Owner another opportunity to pursue amended claims. Although the Federal Circuit recently determined that the PTAB … Continue Reading

Federal Circuit Provides Guidance on Joint Infringement Standard

By Andrew Abokhair on December 27, 2017 Posted in Patent

In Travel Sentry, Inc. v. Tropp, Appeal No. 16-2386 (Fed. Cir. Dec. 19, 2017),[1] the Federal Circuit clarified the scope of joint infringement under 35 U.S.C. § 271(a).[2] Specifically, the court provided guidance on performing analysis under Akamai’s two-pronged joint infringement test, which states that joint infringement may arise when an alleged infringer (1) conditions … Continue Reading

Federal Circuit Splits on Approach to Analyzing Graham Factors

By Wade Haaland, Allen Sokal and David Farsiou on November 6, 2017 Posted in Patent

In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent) were obvious despite evidence of commercial success and copying by others. Concerned that the majority’s opinion constituted a shortcut around a proper Graham analysis, Judge … Continue Reading