The US Court of Appeals for the Federal Circuit affirmed Patent Trial & Appeal Board (Board) patentability decisions after determining that the Board did not err in construing multiple terms within the challenged patents....more
Keniece Gray, Morrison & Foerster summer associate, co-authored this post. We could have a new Federal Circuit judge today (achieving gender parity on the Court). Last week, the Senate invoked cloture (by a 63-34 vote) on...more
The importance of medical diagnostic technologies has been brought to the fore with the COVID-19 pandemic. Rarely does a day pass when the media does not report on matters of approval and availability of tests, testing...more
Claims Covering Human Engineering That Exploit a Naturally-Occurring Phenomenon Are Patent Eligible - In Illumina, Inc. V. Ariosa Diagnostics, Inc., Appeal No. 19-1419, the Federal Circuit modified its earlier decision...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
At the Supreme Court’s request, the Solicitor General on Friday, December 6, weighed in on two pending cert petitions dealing with patent subject matter eligibility under 35 U.S.C. § 101. Though the Solicitor General urged on...more
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
CELLSPIN SOFT, INC. V. FITBIT, INC. ET AL. Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: While not all factual allegations that are...more
Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc...more
On May 22, 2019, a bipartisan committee of the U.S. Senate and House released a draft bill on § 101 reform, in a further attempt to reduce procedural obstacles for patent applicants. The draft bill would change the...more
PATENT CASE OF THE WEEK - E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, Appeal No. 2017-2575 (Fed. Cir. Apr. 17, 2019) - Our featured case of the week revolved primarily on the construction of a single claim term in...more
Video game companies occasionally will take to the PTAB, seeking to invalidate each other’s patents. Mobile game developer Supercell Oy (petitioner) filed a Post Grant Review (“PGR) after learning that the USPTO issued U.S....more
Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more
Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more
In Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018), the Federal Circuit affirmed the PTAB’s application of the rarely relied on “printed matter doctrine” to conclude that...more
In Praxair Distrib., Inc. v. Mallinckrodt Hospital Prods. IP Ltd., the Federal Circuit found that the printed matter doctrine applies equally to physically embodied information and mental steps, and can be invoked in the...more
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., Appeal Nos. 2016-2616, -2656 (Fed. Cir. May 16, 2018) - In an appeal from a inter partes review, the Federal Circuit reviewed a PTAB obviousness...more
On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more
Patent enforcement by Texas-based DataTreasury Corp. (“DataTreasury”) was a key motivation for the creation of Covered Business Method Review (“CBM”) proceedings. Senator Charles Schumer of New York, referring to...more