On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.” Nevertheless, Moderna feels it has a special obligation to allow others access to its patented technologies; accordingly, Moderna indicated that it … Continue Reading
To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading
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
As previously reported on this blog, the issue of payment of fees related to trademark applications/registrations in Venezuela is currently in a state of flux. Specifically, given the current U.S. sanctions generally forbidding U.S. corporations from transacting business with the Venezuelan government, it has been difficult for these U.S. entities to pay fees associated with … Continue Reading
On Feb. 1, 2019, the Venezuelan Ministry of National Commerce sent a notification that patent and trademark fees shall be paid in the Venezuelan cryptocurrency “PETRO.” HOWEVER, the United States government, by Executive Order 13827 (March 19, 2018), expressly prohibits such transactions by U.S. persons, including individuals and companies, relating to any digital currency, digital … Continue Reading
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
Introduction In Visual Memory v. NVIDIA (Fed. Cir. 2017), the Federal Circuit reversed the district court’s holding that Visual Memory’s U.S. Patent No. 5,953,740 is drawn to patent-ineligible subject matter. Instead, the court ruled that the ’740 patent claims an improvement to computer memory systems and is not directed to an abstract idea. The ’740 Patent … Continue Reading
In Cox Communications, Inc. v. Sprint Communications Co. LP, Appeal No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the panel, consisting of Chief Judge Prost (authoring the opinion) and Judges Newman and Bryson, unanimously reversed the district court’s summary judgment of invalidity for indefiniteness under 35 U.S.C. § 112, para. 2. But Judge Newman vigorously rejected the … Continue Reading
In The Medicines Co. v. Hospira Inc., Appeal No. 2014-1469 (Fed. Cir. July 11, 2016), the Federal Circuit issued a unanimous en banc decision ruling that the on-sale bar was not triggered by a supplier’s sale of manufacturing services to an inventor largely because the title to the invention and the right to market the … Continue Reading
On June 27, 2016, the U.S. Supreme Court, without comment, denied Sequenom’s petition for certiorari, leaving in place the Court’s previous rulings prohibiting the patenting of laws of nature and natural phenomenon. Sequenom filed its writ of certiorari with the U.S. Supreme Court on March 21, 2016, asking the Court to provide clarification regarding the … Continue Reading
The Patent Trial and Appeal Board (PTAB) issued its first written opinions based on a trial of the relatively new Post-Grant Review (PGR) proceeeding and genetic factors. American Simmental Association (ASA) brought the petitions for review of the Leachman patents in response to a lawsuit filed by Leachman. ASA is an organization formed in 1968 … Continue Reading
The recent decision in In re Smith (Fed. Cir. 2016), in which the Federal Circuit affirmed the rejection of claims 1-18 as being ineligible for patent under 35 USC § 101, represents another example of the shrinking scope of patent-eligibility since the Supreme Court’s Alice decision.[1] As discussed below, this case concerned the patent-eligibility of … Continue Reading
On January 19, 2016, the Supreme Court issued a grant-vacate-remand order in a dispute between rival medical device companies Medtronic and NuVasive. The order directs the Federal Circuit to revisit its decision in light of the Supreme Court’s ruling in Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). Commil clarified that … Continue Reading
CLS Bank and Its Impact on Software Patents Courts, commentators and clients will be struggling for some time to assess the impact on software patents of Thursday’s Supreme Court decision in Alice v. CLS Bank. Interpreted one way, the decision kills patents directed at computer-implemented business methods. Interpreted another way, it’s business as usual for … Continue Reading
CLS Bank and Its Impact on Software Patents Courts, commentators and clients will be struggling for some time to assess the impact on software patents of Thursday’s Supreme Court decision in Alice v. CLS Bank. Interpreted one way, the decision kills patents directed at computer-implemented business methods. Interpreted another way, it’s business as usual for … Continue Reading
[T]here is no “supplier exception” to the on-sale bar, [and] it is of no consequence that the “commercial offer for sale” [was] made by [the patentee’s] own supplier and was made to [the patentee] itself. On August 14, 2013, in Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., the U.S. Court of Appeals for the … Continue Reading
While the facts may show that damages would be reparable, this assumption is not sufficient [for purposes of a preliminary injunction analysis]. In the face of that kind of universal assumption, patents would lose their character as an exclusive right as articulated by the Constitution and become at best a judicially imposed and monitored compulsory … Continue Reading
Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand. On August 6, 2013, in Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Reyna, Davis) affirmed the … Continue Reading
[E]vidence relating to all four Graham factors — including objective evidence of secondary considerations — must be considered before determining whether the claimed invention would have been obvious to one of skill in the art at the time of invention. On August 7, 2013, in Apple, Inc. v. Int’l Trade Comm’n, the U.S. Court of … Continue Reading
A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring. On June 13, 2013, in Association for Molecular Pathology v. Myriad Genetics, Inc., the U.S. Supreme Court affirmed-in-part and reversed-in-part the Federal Circuit judgment, … Continue Reading
“[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a ‘public use’ where there is not commercial exploitation” [even] when an unaffiliated third party is responsible for the allegedly public use. On May 20, 2013, in Dey, L.P. v. Sunovion Pharms., Inc., the U.S. Court of Appeals for the Federal … Continue Reading