Patents Prior Art Appeals

News & Analysis as of

Case shows ever-changing nature of patent law

The America Invents Act (AIA), passed almost five years ago, continues to substantially change patent law in the United States — and questions about the law’s effects are still being litigated. One important question...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

Federal Circuit Relies on Robust Disclosure to Save Priority Date

On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written...more

PTAB Rejects Consideration of New Issues on Remand

Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand....more

MRCO v. Bandai Shows the Way to Broader Method Claims that Satisfy Alice and Mayo

It is said that one should cast a “wide net to catch the big fish.” In patent parlance, the wide net is the claims and the big fish are the competitors and customers. The computer/software industry and diagnostic industry,...more

Federal Circuit Review | September 2016

Claims Directed to Monitoring and Analyzing Data Held to Be Invalid under § 101 - In Electric Power Group, LLC v. Alstom S.A., Appeal No. 2015-1778, the Federal Circuit upheld the district court’s grant of summary...more

Software Patent Eligibility: Preemption Gets Starring Role at the Federal Circuit

The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s...more

PTAB Refusal to Permit Claim Amendments Remanded

Addressing the standard for granting a motion to amend claims in inter partes review (IPR), the US Court of Appeals for the Federal Circuit rejected a conclusion by the Patent Trial and Appeal Board (PTAB or Board) that the...more

Generalized Common Sense Allegations Cannot Be Used to Supply Important Missing Claim Limitation

Addressing the use of common sense for an obviousness analysis, the US Court of Appeals for the Federal Circuit held that conclusory statements about common sense cannot be used to supply missing claim limitations that play a...more

Inherent Disclosure Satisfied Written Description

In Yeda Research and Development Co., Ltd. v. Abbott GMBH & Co. KG, Slip Op. 2015-1662 (Fed. Cir. 2016), the Federal Circuit held that a claim to an isolated protein described by its partial amino acid sequence satisfies 35...more

It was Error Not to Consider Secondary Considerations, But They Wouldn’t Have Made a Difference

In ClassCo, Inc. v. Apple, Inc., [2015-1853] (September 22, 2016), the Federal Circuit affirmed a PTAB decision affirming an Examiner’s rejection of claims to a call-screening system that verbally announces a caller’s...more

LifeNet Health v. LifeCell Corp. (Fed. Cir. 2016)

The complexities that can be attendant on defending against an infringement allegation, and the possibility that a straightforward path to non-infringement can be complicated by claim construction even for terms construed...more

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

Despite PTAB “Sweet Talk” Federal Circuit Reverses Invalidity Of Deicing Patent

The Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) invalidity decision last week that had found a patent for a molasses-based, road deicing agent obvious over earlier patents on sugar-related inventions. The...more

Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments

Patentees have been generally frustrated with the Board’s unwillingness to grant motions to amend. The Board’s Idle Free case, and its progeny, have added a number of requirements to a motion to amend that are above and...more

Prevailing Party Before PTAB May Not Appeal

Addressing the right of a prevailing party to appeal a favorable decision, the US Court of Appeals for the Federal Circuit dismissed an appeal of a case from the Patent Trial and Appeal Board (PTAB or Board) and ruled that...more

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

Ariosa Loses Verinata Patent Challenge

Fetal diagnostic pioneer Ariosa Diagnostics lost its latest attempt to invalidate competitor Verinata Health’s U.S. Patent No. 8,318,430, “Methods of Fetal Abnormality Detection.” The USPTO’s Patent Trial and Appeal Board...more

Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and...

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing...more

Federal Circuit Finds Life Sciences Subject Matter Patent Eligible

On July 5, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion vacating the summary judgment of invalidity of U.S. Patent No. 7,604,929 (“the ’929 Patent”) and sent the case back to the District Court...more

“Substantial Evidence” Hurdle is Substantially Difficult to Overcome

One of the less appreciated hurdles to a successful appeal of a Final Written Decision in an IPR proceeding is the “substantial evidence” standard of review the Federal Circuit applies to the Graham factors that underlie a...more

In re Aqua Products, Inc. -- CAFC Grants Rehearing En Banc to Consider PTAB Motions to Amend

On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more

Prior Art References Introduced After IPR Institution Are Permissible to Show State of Art

Addressing issues related to introducing additional prior art references after institution of an inter partes review (IPR), the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or...more

BASCOM—Federal Circuit Holds Internet Content Filtering Patent Passes Alice Test

In a Section 101 analysis under Alice Corp. Pty. Ltd. v. CLS Bank Intl., “[a]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”—even if individual claim...more

No Approval for Generic Product for Treatment of Rosacea **WEB ONLY**

Addressing infringement under the doctrine of equivalents and obviousness issues, the US Court of Appeals for the Federal Circuit affirmed the district court’s ruling barring approval of a generic version of Finacea® gel...more

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