Patent Prosecution

News & Analysis as of

As Part of Protective Order, District Court Orders Prosecution Bar and Covenant Not to Sue for New Patents Acquired by Patent...

In this patent infringement action, a dispute arose between Plaintiff Blackbird Tech LLC ("Blackbird") and the defendants over the terms of proposed protective orders to govern the use of confidential information produced....more

Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror

Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, evaluated various patent prosecution options in Nutter Insights. Rory analyzed the five programs that can accelerate the process and their differentiators...more

Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information. Appellant argued in the appeal that the...more

Formal Logic Reveals Hidden Dangers of Logical Fallacies in Patent Claim Rejections

There is no statutory requirement that formal logic be adhered to during examination of patent claims. Examiners and patent practitioners are free to use a wide variety of discussion and argument styles and topics, and these...more

New Website Provides Useful Examiner Data for Free

A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving...more

Four Reasons to File an RCE with a Request to Suspend Processing

The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c). The suspension...more

No Mention Of Damages Is Permitted During Liability Phase Of Trial

Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more

Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued...more

A Substantially Pure Isomer Is Obvious in View of Both a Completely Pure Isomer and an Impure Mixture (Spectrum Pharmas. V. Sandoz...

Addressing an unusual twist on an obviousness case, the U.S. Court of Appeals for the Federal Circuit held a substantially pure isomer obvious in view prior art disclosing both a completely pure isomer and an impure mixture....more

Reversal of Narrow Claim Construction Results in Satisfaction of Claim Element (Avid Technologies, Inc. v. Harmonic, Inc.)

Addressing the standard to establish a “clear and unmistakable” disclaimer of claim scope during prosecution, the U.S. Court of Appeals for the Federal Circuit reversed the district court’s narrow claim construction and...more

No Per Se Ethical Violation for "Subject Matter Conflicts"

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - In a case that was watched by the entire patent law community with some fascination, the Supreme Judicial Court of Massachusetts concluded on December 23,...more

Case Law Arguments for “Abstract Ideas” Rejection of Patent Claims

Ever since the Supreme Court ruling on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent practitioners have seen an historic increase in the number of 35 USC §101 “abstract ideas” rejections of patent...more

Update on Section 101 Rejections at the USPTO

In my June post, The One Year Anniversary: The Aftermath of #AliceStorm, I surveyed the frequency of Section 101 rejections at the USPTO. My analysis was based on approximately 300,000 office action and notices of allowance...more

Trans-Pacific Partnership agreement on term of data exclusivity for biological pharmaceuticals, not patent term

Five years of negotiations have culminated this week in the signing of the Trans-Pacific Partnership (the “TPP”) agreement by 12 countries from the Pacific-rim region, including the US and Australia. While the partnership...more

Claims Not Limited to Preferred Embodiment - Inline Plastics Corp. v. Easypak, LLC

In correcting the district court’s claim construction, the U.S. Court of Appeals for the Federal Circuit vacated the district court’s judgment of non-infringement and remanded, finding that the claims were improperly limited...more

Logic, Arguments and Patents

Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United...more

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

Court Finds Dow Claims Clearly Indefinite

In Dow Chemical Co. v. Nova Chemicals Corp., the Federal Circuit held claims reciting a limitation that could be calculated in several ways indefinite where the patent claims, specification, and prosecution history failed to...more

Federal Circuit Review | July 2015

Nunc Pro Tunc Assignments Insufficient To Confer Retroactive Standing - In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a...more

Attacking Patents on Written Description & Enablement Grounds in Inter Partes Review

Although Inter Partes Review (IPR) is limited to grounds of unpatentability based upon prior art references, it is nevertheless possible to raise issues of written description or enablement by applying intervening prior art...more

PTAB Highlights Motion to Amend Decision

Another day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent...more

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED...more

Pharmaceutical IP and Competition Law in Australia: Overview

Conditions and legislation Australian patent law is governed by the Patents act 1990 (Cth) (Patents Act). The Patents Act provides for the grant of two main types of patents in Australia: - Standard, which is...more

Intellectual Property Alert: Federal Circuit Holds Claims Indefinite Based on Prosecution History in Teva Pharmaceuticals USA v....

On June 18, 2015, the United States Court of Appeals for the Federal Circuit released its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. The case was on remand from the Supreme Court, which vacated the Federal...more

Rejection of Gilead Patent Raises Issues for Companies Seeking Pharmaceutical Patent Protection in China

Chinese patent prosecution recently made worldwide headlines when the press announced that the Chinese Patent Office (SIPO) rejected a Gilead Sovaldi prodrug patent. Sovaldi (sofosbuvir) is a breakthrough drug used to treat...more

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