Courtenay C. Brinckerhoff

Courtenay C. Brinckerhoff

Foley & Lardner LLP

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Airing the USPTO's Naturally Occurring Dirty Laundry — the Subject Matter Eligibility Stain

It has been five months since the USPTO issued its Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products to aid examiners in applying the...more

8/22/2014 - Final Guidance Myriad Patent-Eligible Subject Matter Prometheus USPTO

Federal Circuit Upholds Inequitable Conduct Defense Against Apotex Patent

In Apotex Inc. v. UCB, Inc., the Federal Circuit upheld the district court’s finding that Apotex’s patent is unenforceable due to inequitable conduct. While affirming on the ground of “but-for materiality,” the Federal...more

8/19/2014 - Patent Infringement Patent Litigation Patents

First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of...more

8/11/2014 - Patents Post-Grant Review

Federal Circuit Finds That FDA Citizen Petition Could Give Rise to Antitrust Liability

In Tyco Healthcare Group LP v. Mutual Pharmaceutical Co., Inc., the Federal Circuit remanded-in-part for the district court to determine whether Tyco’s citizen petition to the FDA gave rise to antitrust liability. Judge...more

8/8/2014 - ANDA Antitrust Litigation FDA Pharmaceutical Prescription Drugs

Visiting the USPTO Without a REAL ID

As announced on the “USPTO Locations” page of its website, the USPTO has implemented a new policy for members of the public visiting the USPTO relating to the REAL ID Act. Under the REAL ID Act, the USPTO may no longer accept...more

8/7/2014 - REAL IDs USPTO Websites

Comments on Patent Subject Matter Eligibility Guidance Due by July 31

This week brings the July 31, 2014 deadline for submitting written comments on two USPTO patent subject matter eligibility guidance documents: The “Myriad-Mayo” Guidance issued March 4, 2014 (for claims involving laws of...more

7/29/2014 - CLS Bank v Alice Corp Myriad-Mayo Patent-Eligible Subject Matter Patents Public Comment Rulemaking Process USPTO

Federal Circuit Says Commission Must Toe the Line in Invisalign ITC Case

In Align Technology, Inc. v. International Trade Commission, the Federal Circuit held that ITC action that violated ITC’s own regulations warranted vacatur under the Administrative Procedures Act. While the case addresses...more

7/23/2014

How Long Is Too Long (or Too Short) for Patent Application Pendency?

The USPTO is requesting input on the “optimal” targets for its patent application pendency metrics. The USPTO’s current targets are 10 months to a first Office Action and 20 months to grant or abandonment. The USPTO wants to...more

7/21/2014 - Patent Applications Pendency Targets Public Comment USPTO

Why Are Method of Treatment Claims and Method of Manufacture Claims Subject to Scrutiny Under the USPTO Patent Subject Matter...

The USPTO has asked for written comments on its patent subject matter eligibility guidance by July 31, 2014. In this article, I discuss why therapeutic method claims and method of manufacture claims should not be subject to...more

7/16/2014 - CLS Bank v Alice Corp Mayo v. Prometheus Method of Manufacture Patents Myriad Patent-Eligible Subject Matter Patents SCOTUS Section 101 Treatment Method Patents USPTO

Federal Circuit Holds That Even Functional Claims Require Structural Fence Posts

In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit affirmed the district court decision that found AbbVie’s patents directed to anti-IL-12 antibodies invalid for lack of adequate written description. As...more

7/14/2014 - Biotechnology Functionality Patent Infringement Patent Litigation Patents Pharmaceutical Pharmaceutical Patents

Putting Structure and Function Into Context for USPTO Patent Subject Matter Eligibility Guidance

The USPTO’s ”Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products” has been criticized for requiring a product to be markedly different in...more

7/9/2014 - Minerals Patent-Eligible Subject Matter Patents Pharmaceutical Pharmaceutical Patents Public Comment USPTO

Federal Circuit Looks for a Different Kind of Unexpected Results in BMS v. Teva

In Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit affirmed the district court’s finding that BMS’s Baraclude® patent is invalid as obvious. In so doing, the court gave little weight to...more

7/3/2014 - ANDA Bristol-Myers Squibb Obviousness Patent Litigation Patents Pharmaceutical Pharmaceutical Patents Prescription Drugs Teva Pharmaceuticals

USPTO Asks for Patent Subject Matter Eligibility Comments by July 31, 2014

In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014 on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank...more

6/30/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Mayo v. Prometheus Patent-Eligible Subject Matter Patents Public Comment SCOTUS Software USPTO

How the Supreme Court Decision in Alice Corp. v. CLS Bank Undermines the USPTO Subject Matter Eligibility Guidance

On June 19, 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International, finding that patents directed to “a computer-implemented scheme for mitigating ‘settlement risk’” were invalid as being drawn...more

6/25/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Risk Mitigation SCOTUS Software

Supreme Court: Generic Computer Implementation Does Not Render Abstract Ideas Patentable

On June 19, 2014, the Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l, No. 13-298, which was previously discussed. In a unanimous opinion by Justice Thomas, the Court held, consistent with its precedent,...more

6/20/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Popular Risk Mitigation Software

USPTO Proposes Revised Patent Term Adjustment Rules for RCEs Under Novartis

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that...more

6/20/2014 - Novartis Patent Applications Patent Term Adjustment Proposed Regulation Public Comment Request for Continued Examination USPTO

Federal Circuit Says Mistaken Belief Required for Reissue Error

In In re Dinsmore, the Federal Circuit held that the reissue process could not be used to correct an alleged defect in a terminal disclaimer between patents that were not commonly owned, because there had been no “mistaken...more

6/17/2014 - Patent Litigation Patents Reissue Patents Terminal Disclaimer USPTO

Is Evidence of Obviousness Always Required?

In K/S HIMPP v. Hear-Wear Technologies, LLC, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the decision of the Central Reexamination Unit Examiner that refused to hold...more

6/13/2014 - Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO

Supreme Court Adopts Reasonable Certainty Test for Definiteness

On June 2, 2014, the Supreme Court issued a unanimous decision in Nautilus, Inc. v. Biosig Instruments, Inc., rejecting the Federal Circuit’s “insolubly ambiguous” test for patent claim indefiniteness under 35 USC § 112, and...more

6/11/2014 - Definiteness Indefiniteness Nautilus Inc. v. Biosig Instruments Patent Infringement Patent Litigation Patents Reasonable Certainty Standard SCOTUS

Federal Circuit Finds Consumer Watchdog Lacks Standing to Appeal Reexamination Decision Upholding WARF Stem Cell Patent

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Federal Circuit held that an inter partes reexamination requester must establish an injury in fact sufficient to confer Article III standing in order to appeal...more

6/6/2014 - America Invents Act Appeals Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents Post-Grant Review Stem cells WARF

Supreme Court Reverses Federal Circuit on Induced Infringement in Limelight Networks, Inc. v. Akamai

On June 2, 2014, the Supreme Court issued a unanimous decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., reversing the en banc Federal Circuit decision and holding that there can be no liability for induced...more

6/4/2014 - Akamai Technologies Infringement Limelight Limelight Networks Patent Infringement Patent Litigation Patents SCOTUS

Federal Circuit Vacates Infringement of Braintree SUPREP Patent

In a divided opinion issued in Braintree Labs., Inc. v. Novel Labs., Inc., the Federal Circuit reversed the district court on one of two challenged claim construction issues and vacated the district court’s finding of...more

5/30/2014 - ANDA Claim Construction Generic Drugs Patent Infringement Patent Litigation Patents

USPTO Finally Updates Patent Term Adjustment Calculator – Sort of

In a Federal Register Notice issued May 15, 2014, the USPTO announced that its Patent Term Adjustment (PTA) calculator finally has been updated to implement the changes to the PTA statute embodied in the Technical Corrections...more

5/20/2014 - Novartis Patent Term Adjustment Patent Term Calculator Patents USPTO

Update From the May 9, 2014 USPTO Patent Eligibility Guidelines Forum

On May 9, 2014, the USPTO hosted a forum to receive public feedback on the patent subject matter eligibility guidance for examiners circulated on March 4, 2014. The USPTO heard formal presentations from ten speakers...more

5/12/2014 - Myriad Patent-Eligible Subject Matter Patents Product of Nature Doctrine Public Comment SCOTUS USPTO

Baaaaad News for Patenting Cloned Sheep

In a unanimous panel decision, the Federal Circuit affirmed the finding of the USPTO Patent Trial and Appeal Board (PTAB) that claims directed to cloned cattle, sheep, pigs and goats were directed to non-patent eligible...more

5/12/2014 - Genetic Materials Myriad Patent Trial and Appeal Board Patents Section 101 USPTO

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