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Millennium Pharm. v. Sandoz, Inc. – Revenge of the Chemical Judges

In the 2003 panel decision in Schering Corp. v. Geneva Pharm., Inc., the panel rejected “the contention that inherent anticipation requires recognition [of the claim element not found] in the prior art.” The claims were...more

The Cleveland Clinic v. True Health Diagnostics LLC – Time to Redefine “Inventive Concept”?

Ariosa was a decision that essentially held that the novel discovery of a naturally-occurring phenomenon could not per se meet the Mayo/Alice requirement for an inventive concept, even though it was of “groundbreaking...more

Just When You Thought Things Couldn’t Get Worse Via The Application Of 101

On Friday, in Cleveland Clinic Foundation v. True Health Diagnostics, Appeal no. 2016-1766 (Fed. Cir., June 16, 2017), a Fed. Cir. panels of Judges Lourie, Reyna and Wallach (Reyna writing) held that claims to a method of...more

Exhausted by Exhaustion: Impression Products v. Lexmark

Please revisit Don Chisum’s and Janice Mueller’s comments on Impression Products v. Lexmark, No. 151189 (S. Ct. May 30, 2017), in which the Court held that a seller of a patented printer cartridge had exhausted its patent...more

USPTO Management Changes – Who’s on First?

After USPTO Director Michelle Lee resigned quite suddenly on Tuesday, rumors and speculation have been the only constant. Early speculators bet that Drew Hirschfeld, current Commissioner of Patents, would get the job. (He is...more

6/12/2017  /  Patents , USPTO

“TC Heartland” Supreme Court Limits Venue in Patent Suits

Monday, in a unanimous opinion (Goresuch did not participate), the Supreme Court interpreted the patent venue statute (28 USC s. 1400(b)) to require that the phrase “where the defendant resides” be limited to the defendant’s...more

IPO, AIPLA and ABA IP Section Propose Legislative Fixes for Section 101

Between February and May of this year, IPO, AIPLA and the ABA IP Section have released proposals for amendments to 35 U.S.C. s. 101 to void the Mayo/Alice Rule and to clarify the definition of an “abstract idea” as it relates...more

Fed. Cir. in Helsinn v. Teva Declines Limiting the Requirements of the “On Sale” Bar

In Pfaff v. Wells Electronics, 525 US 55 (1988), the Supreme Court attempted to focus the factors invoking the on-sale bar of s.102, by holding that the claimed invention must both be the subject of a “commercial sale”...more

Fairchild (Taiwan) Corp. v. Power Integrations, Inc.

In my last post, I discussed estoppel in the context in inter partes review, in which defendant filed for IPR after losing in the courts. The Board found the claims-in-suit to be obvious. The Federal Circuit affirmed that the...more

Novartis AG, LTS et al. v. Noven Pharmaceuticals, Inc. – Prior Judicial Opinions Don’t Bind the PTAB

After Novartis’ patents were found nonobvious by the Fed. Cir., affirming the Delaware District Court, defendant Noven filed for inter partes review (IPR) of U.S. Pat. Nos. 6316023 and 6335031, on rivastigmine and an...more

ABA-IPL Section Proposes Amendments to s. 101 – Too Much of a “Good Thing”?

The ABA-IPL Section sent proposed amendments to PTO Director Lee intended to lessen the burden on patent applicants encountering the Mayo/Alice Rules for patent-eligible subject matter. The proposed amendments list exceptions...more

Supreme Court Bars Laches Defense, Leaves Statute of Limitations in Patent Suits

One more Federal Circuit decisions bites the dust. Today, in SCA Hygiene Products AB v. First Quality Baby Products, LLC, the Supreme Court held that the equitable doctrine of laches (undue delay) cannot be invoked as a...more

Michelle Lee Misses AUTM Talk

Although scheduled to be the honored guest at a “Fireside Chat” at the AUTM Annual Meeting Sunday evening, Ms. Lee was a no show. Suddenly the picture on the Program Board was Katherine Ku, head of Tech Transfer at Stanford....more

3/15/2017  /  Patents , USPTO

Broad Institute/MIT/Harvard CRISPR Patents Survive PTO Interference

Yesterday, the PTAB in interference 106,048 issued a short order finding no interference- in- fact between the claims of 12 Broad Institute patents (US Patent Number 8,697,359 et al.) and the application held by The Regents...more

Intellectual Properties Owners Association Proposes Legislative Fix for s. 101

On Wed., February 8, 2017, IPO released the report of its legislation task force. Unlike the hundreds of academic analyses of the legislative history of s. 101 – and this report includes another – the Task Force took the...more

AKAMAI V – “How To” Induce Infringement of a Method of Treatment Claim

I have both been busy since the holiday season and frankly, uninspired by the case law that has appeared on the scene. Who can be enraptured by the fine points of standing when we are all speculating about whether Michelle...more

Transubstantiation of a Machine into an Abstract Idea

In the Catholic Church “transubstantiation” is the belief that the wafer and the wine become the actual body and blood of Christ during the communion ceremony. Recently, the PTAB went into the mystic to transform claims to a...more

In re NuVasive, Inc. – Explain Yourself!

Since KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness – that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to...more

USPTO Holds First Roundtable on “Subject Matter Eligibility Guidelines”

On November 14th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The structure was unique as there...more

PTO Schedules s. 101 Roundtables

At 81 Fed. Reg. 71485, The PTO has scheduled two roundtables at the PTO to receive feedback from the IP community, particularly on the Examples that were promulgated in May. The first roundtable will be on November 14th from...more

Patent Office Releases Comments on Standards for Patent Eligibility Examination

On November 2nd, Robert Bahr released a concise but informative memorandum that could be entitled “What We Learned From McRO and BASCOM.” I have posted on McRO, Inc. dba Planet Blue v. Bandi Namco Games America Inc. et al.,...more

PTO Proposes Revisions to the Duty of Disclosure (“Rule 56”)

After issuing a brief “notice” in 2011, shortly after the Fed. Cir. revised the duty of disclosure in the Therasense (76 FR at 43631), the PTO has now published a notice of proposed rulemaking to gather comments on its...more

11/3/2016  /  Patents , Proposed Amendments , USPTO

Hillary Believes in the Patent System

Hillary Clinton has released a position paper: “Initiative on Technology and Innovation” which contains two paragraphs on actions she would promote to reduce litigation by trolls and strengthen the USPTO. She notes that...more

Vanda v. Roxane Labs. – Are Two Natural Laws Better Than One?

As you will recall, in Prometheus v. Mayo, the Supreme Court held that a claim reciting a natural law had to have other non-conventional steps to pass muster under s. 101. The natural law in Mayo was the correlation between...more

UCB v. Yeda R&D Co. – No “Safe Harbor” for Unamended Claims

UCB sued Yeda for a DJ of non-infringement of US Patent No. 6,090,923 [Appeal No. 2015-1957 (Fed. Cir. September 8, 2016)]. The main claim in question was directed to “A monoclonal antibody which specifically binds a human...more

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