Patent Prosecution

News & Analysis as of

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

The One Year Anniversary: The Aftermath of #AliceStorm

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Divided Infringement Challenges for Personalized Medicine

On remand from the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit last month held in Akamai Tech. Inc. v. Limelight Networks Inc. that “direct infringement liability of a method claim under 35 U.S.C....more

Factual Findings for Arguing a Post-Alice 35 USC §101 Patent Ineligible Subject Matter Rejection

During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC...more

File inventor oaths/declarations early in US national stage applications

Since the implementation of the America Invents Act, the United States Patent and Trademark Office (USPTO) has allowed applicants in utility patent applications to postpone the filing of an inventor’s oath or declaration...more

Opportunity for Equivalents in Claim Amendments

It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution. That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which...more

Primer on Global and IP5 Patent Prosecution Highway Pilot Programs

Following the implementation of its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office proceeded to establish PPH programs with nearly thirty other...more

Patents In the Shark Tank

My family and I enjoy watching Shark Tank. It’s a mix of business, technology, humor and, in some cases, is a testament to the entrepreneurial spirit of people. Of course, we realize it is mainly about entertainment. It...more

Drafting Software Patents In A Post-Alice World [Video]

It has been a challenging year for software patent owners following the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Since that ruling was handed down, a large number of software patents have been...more

Navigating Protective Order and Prosecution Bar Issues in BPCIA Litigation

Protective orders preventing litigation counsel from participating in the prosecution of litigation-related patents are commonplace. The Biologics Price Competition and Innovation Act (“BPCIA”), for example, provides a...more

Understanding Post-AIA Power of Attorney Procedures

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on...more

Gilead Sciences, Inc. v. Lee (Fed. Cir. 2015) - Filing of IDS after Response to Restriction Requirement Constitutes Failure to...

Last week, in Gilead Sciences, Inc. v. Lee, the Federal Circuit affirmed the decision by the District Court for the Eastern District of Virginia granting summary judgment to the Director of the U.S. Patent and Trademark...more

Federal Circuit Upholds Patent Term Adjustment Deduction for IDS Filed After Restriction Requirement

In Gilead Sciences, Inc. v. Lee, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute as permitting the USPTO to charge “Applicant Delay” when an Information Disclosure Statement...more

Rep. Goodlatte Introduces His Patent Reform Bill (Again)

As expected by almost everyone (and anticipated by several groups who urged him not to do so; see "Pro-Patent Coalition Writes Letter to the House and Senate Judiciary Committees" and "Big Ten Lobbies Congress to Tread...more

Points & Authorities - Fall 2014

In This Issue: - Legal Considerations for Web Based Start-Ups - California’s Water Anxiety Prompts Landmark Groundwater Legislation - Points from the President - Factor Beware: A Judgment Lien...more

Judge Griesa finds a patent prosecution bar does not preclude litigation counsel from assisting in an IPR, and would have reached...

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Case Number: 1:12-cv-08060 - Patentee Endo asked the court to rule that the protective orders in the patent infringement cases it filed...more

Checking It Twice: Verify Facts and Arguments on Prior Art to Avoid Inequitable Conduct in Patent Prosecution

In the case Apotex, Inc. v. UCB, Inc., released in August 2014, the Federal Circuit affirmed a district court's finding of inequitable conduct on the part of an inventor-drafter, as the court found clear and convincing...more

Federal Circuit Frames Test for Patent-Eligibility

Personalized medicine relies on diagnostics to analyze a patient for individualized therapy and for monitoring a patient’s health status. Some diagnostic tests use natural products, for example gene sequences, either as the...more

IPR Update – Prosecution Bars

Are proceedings before the Patent Trial and Appeals Board ("PTAB") more like prosecution or more like litigation? This might appear to be a purely academic question, except for one significant issue -- litigation prosecution...more

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