Tag Archives: federal circuit

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

.SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register .SUCKS for Failure to Function

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Intellectual Property
On Feb. 2, 2022, the Federal Circuit decided In re Vox Populi Registry Ltd., an appeal from the Trademark Trial and Appeal Board’s (Board) affirmance of the refusal to register a stylized version of the term .SUCKS. Vox Populi operates the registry for the .SUCKS generic top-level domain, offering domain names ending in “dot sucks” … Continue Reading

Reasonable Expectation of Success’ Analysis Must Be Tied to Claim Limitations

Photo of Mark EinsiedelBy Mark Einsiedel on Posted in Federal Circuit, Patent Trial and Appeal Board
One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” … Continue Reading

Federal Circuit Requires Definitive Written Description Support for Quantitative Values and Ranges

Photo of Michael Schwartz Ph.D.By Michael Schwartz Ph.D. on Posted in Federal Circuit, Patents
Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention.[1] The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure. In … 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

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

Photo of Scott SkilesBy Scott Skiles on Posted in Federal Circuit, Patents, Trademark, USPTO
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

Federal Circuit Clarifies Standard For Bringing a Cancellation Proceeding under 15 U.S.C. § 1064

Photo of Kevin BovardBy Kevin Bovard on Posted in Trademark
In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act.  The Federal Circuit noted that while these questions are often framed as questions of … Continue Reading

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark
The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a … Continue Reading

Child Artists, Rejoice: Federal Circuit Affirms Noninfringement and Invalidity Judgments Against Designer of Chalk Holders

Photo of Robert RazzanoBy Robert Razzano on Posted in Patent
The COVID-19 pandemic has caused sweeping changes to our daily lives and the way we interact with one another. Many of these changes have been rather unwelcome. But one pleasant change I have noticed is a significant increase in driveway chalk art. Children across the country now can rest easy knowing they have not infringed … Continue Reading

Something on Which Even Patent Litigators Can Agree: McRO v. Bandai, Inc. Clarifies the Framework for Enablement Challenges and for Enablement Defenses

Photo of Aaron RabinowitzBy Aaron Rabinowitz on Posted in Patent
In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains … Continue Reading

Federal Circuit’s COVID-19 Response Brings Public Telephonic Oral Arguments and Patent Cases Decided on the Briefs

Photo of John MurphyBy John Murphy on Posted in Patent
The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side … 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

Photo of Scott FeldmannBy Scott Feldmann on 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

Photo of Mark EinsiedelBy Mark Einsiedel on 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

Federal Circuit Confirms the Value of Design Patents Covering Replacement Parts

Photo of Lisa N. CollinsPhoto of Erin CaldwellBy Lisa N. Collins and Erin Caldwell on 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

The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage

Photo of Jason OliverBy Jason Oliver on Posted in Trademark
The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater Omaha Packing Company’s (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held … Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

By Allen Sokal on Posted in Patent
Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit. In Thales Visionix Inc. v. United States, … Continue Reading
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