Prior Art

News & Analysis as of

Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc. (Fed. Cir. 2016)

The Federal Circuit recently affirmed a district court's claim construction and determination that claim terms were not indefinite in Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc....more

Analyzing Patent Claims Having Conditional Language – the PTAB Provides Clarity

The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential. In this decision the Board clarified how to interpret method and system claims...more

BioPharma Patents Quick Tips & News – October 2016

October 2016 BioPharma Newsletter — Halloween Edition - U.S. patent eligibility can be scary! Tips to avoid the Grim Reaper (a.k.a. the Examiner or a Judge) killing your claims:  Bonus tip: This strategy works even...more

PTAB Upholds Lialda Patent Over Kyle Bass IPR Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has issued a final written decision upholding Shire’s Lialda® patent over the Inter Partes Review (IPR) challenge brought by Kyle Bass and his Coalition for Affordable Drugs. The...more

Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires...more

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

Accused Infringer Puts the Screws on Patentee

We wrote recently about a summary judgment decision in which Judge Indira Talwani found certain asserted claims of two patents on a type of breakable screw to be obvious in light of the prior art. This ruling came even though...more

Bass IPR Petition Against Shire Fails

On October 5, the PTAB ruled against Petitioner Coalition for Affordable Drugs II LLC, an organization formed by hedge fund manager Kyle Bass, holding that the petitioner had not shown by a preponderance of the evidence that...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

MAZ Encryption Technologies: The Proper Way to Decide a Rule 12(c) Motion for Ineligible Subject Matter

Given the volume of district court decisions regarding Section 101, I typically don't find ones that stand out enough to warrant discussion. But last week's decision by Judge Stark in MAZ Encryption Technologies LLC v....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

Publications Must Be Accessible to Persons of Ordinary Skill

On Wednesday, September 7, the Patent Trial and Appeal Board found that U.S. Patent Nos. 7,670,358 and 7,776,072 were not obvious, in part because certain cited prior art was not “disseminated or otherwise made available...more

Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2016) - Just When You Thought the Federal Circuit Was Softening...

Intellectual Ventures I LLC ("IV") sued Symantec Corp. and Trend Micro (defendants) for infringement of various claims of three U.S. Patents (Nos. 6,460,050; 6,073,142; and 5,987,610). The District Court held the asserted...more

If You Can’t Say Anything Nice About the Prior Art, Don’t Say Anything at All

It turns out that Mom was right when she said: “If you can’t say anything nice about someone, don’t say anything at all.” Criticism of the prior art can limit the scope of your claims. In UltimatePointer, LLC v. Nintendo...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

Federal Circuit Finds Adequate Written Description Support Under the Doctrine of Inherent Disclosure

On September 20, 2016, the Federal Circuit issued an opinion affirming a judgment by the District Court for the District of Columbia finding the claims of Abbott GMBH & Co. KG’s (“Abbott”) U.S. Patent No. 5,344,915 (the “’915...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

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

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