Prior Art

News & Analysis as of

Yeda Research and Development Co. v. Abbott GmbH & Co. (Fed. Cir. 2016)

Before the Supreme Court's recent forays into the topic of subject matter eligibility in patent law, the most contentious line of cases (from the Federal Circuit) concerned the written description requirement of Section 112. ...more

Subject Matter Eligibility May Rest on Whether Software is “Technological”

Two recently issued decisions by federal courts highlight the uncertainty around claims to software-implemented inventions after the Supreme Court decision in Alice v. CLS Bank. Both decisions relate to the patent...more

A legal look at Patent Trial and Appeal Board decisions and trends: Shaving Patents Avoid IPR by a Whisker

Inter Partes Review (IPR) proceedings are limited to prior art challenges for printed prior art. Although prior art typically includes drawings that illustrate physical structures, the description of those drawings may only...more

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...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

Backgrounds — The Less Said the Better

Prosecutors are repeatedly being told by the Federal Circuit, and we are gradually learning, that the less said on the Background the better. Whether it is by admitted prior art, criticisms of the prior art that work a...more

Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v....more

Protective Order for Source Code

A developer’s source code is considered the secret recipe of the software world – the digital equivalent of the famed Coca-Cola recipe. In Google Inc. v. Mutual, 2016 BCSC 1169 (CanLII), a software developer sought a...more

McRo decision gives software/computer-based patents a big boost

On September 13, 2016, the US Court of Appeals for the Federal Circuit held as patent-eligible patent claims directed to automated lip-synching for animated characters. This holding builds upon the few decisions thus far...more

USPTO Issues Notice of Roundtable and Request for Comments on Importing Prior Art Automatically and Streamlining Patent Issuance

Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 59197) requesting written comments regarding two issues: (1) how the Office can better leverage other applications...more

Prior Art Take 2: Finjan and Sophos Gear up for a Second Battle on Whether Prior Art Was Publicly Available

Order Denying Finjan, Inc.’s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick) In a battle that likely felt like déjà vu for the parties, Finjan for the second time...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

Common Sense Is Not So Common-ly Obvious

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the...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

Help The USPTO Leverage Prior Art From Related Patent Applications

The USPTO is seeking input on how it can leverage prior art information available on-line in related patent applications in order to “improve patent examination quality and efficiency” and reduce “applicant’s burden to...more

Roadmap to Software Patent Eligibility

Recent Federal Circuit cases provide direction on how to satisfy the PTO or the federal courts that software is eligible for a patent. Some key points include: - New ways of organizing data - New connections between...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

Patents: Important Facts, Takeaways, and Pitfalls to Avoid

1. Broad Claim Scope is Key. Merely getting a patent is not the goal. The goal is to maximize the scope of meaningful patent protection to which your invention is entitled. Put yourself in a competitor’s shoes - how would you...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

Federal Circuit Affirms Tygacil Formulation Patent

In Apotex, Inc. v. Wyeth LLC, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding that Apotex had failed to show that claims directed to a specific formulation of tigecycline...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

When Can Common Sense be Relied Upon to Find an Invention Obvious?

All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide additional evidence, above and beyond...more

Arendi S.A.R.L. v. Apple, Inc. – Defining “Common Sense”

For some time, I have wanted to do a post on this recent Fed. Cir. decision (Appeal No. 2015-2073 (Fed. Cir. , August 10, 2016),) in which the Fed. Cir. panel of Judges Moore, Linn and O’Malley (writing) reversed a PTAB...more

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