News & Analysis as of

Written Descriptions

Uniloc USA v. Sega of America: Evaluating the Priority Date of a Means + Function Claim

Uniloc USA owns US 5,490,216 (‘216), with claims directed to “[a] registration system for licensing execution of digital data in a use mode….” Sega petitioned for Inter Partes Review of the ‘216 patent, arguing that Claims...more

2017 Supreme Court and Precedential Patent Cases From the Federal Circuit, With Some Significant Cases from 2016

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Federal Circuit Questions Written Description For Antibody Claims

by Foley & Lardner LLP on

The October 5, 2017 Federal Circuit decision in Amgen Inc. v. Sanofi is getting a lot of attention for its commercial impact, because the court vacated the permanent injunction that prevented Sanofi and Regeneron from...more

Federal Circuit OK's Use of Post-Priority-Date Evidence

by Morgan Lewis on

The ruling found that the use of such evidence was proper for written description and enablement....more

Risks of Cover Page Provisional Applications

by McNair Law Firm, P.A. on

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional patent application. These applications are typically used as a faster and lower-cost first...more

Recap on Design Patent Drawings

This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO...more

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description...more

Remand Where PTAB Decision Does Not Explain Reasoning, Account for All Evidence

by McDermott Will & Emery on

In reviewing a decision from the Patent Trial and Appeal Board (PTAB) deciding three interferences involving competing claims directed to testing methods for fetal aneuploidies, the US Court of Appeals for the Federal Circuit...more

PTAB Grants Rare Supplemental Motion to Amend on Remand from Federal Circuit

by Knobbe Martens on

On remand from the Federal Circuit, the PTAB granted Veritas’s Supplemental Motion to Amend for one substitute claim and denied the motion with respect to a second claim in Veeam Software Corporation v. Veritas Technologies...more

Federal Circuit Finds That Fetal Diagnosis Claims Survive Written Description Attacks

by Knobbe Martens on

Stanford University v. The Chinese University of Hong Kong. Federal Circuit Appeal No. 2015-2011. Decided June 27, 2017. In an appeal from the Patent Trial and Appeal Board (PTAB), the Federal Circuit held that claims...more

Why The Federal Circuit Revisited Written Description

by Foley & Lardner LLP on

In Stanford University v. The Chinese University of Hong Kong (Fed Cir. No 2015-2011, June 27, 2017), the Federal Circuit vacated and remanded interference decisions on the ground the Patent Trial and Appeal Board (“Board”)...more

Written Description Must Support Claims; Not Exclude Alternatives

In The Board of Trustees of the Leland Stanford Junior University v. The Chinese University of Hong Kong, [2015-2011] (June 27, 2017), the Federal Circuit vacated the PTAB’s determination in an interference that Stanford’s...more

Written Description Too Attenuated for Patentability: Claims Lack Support

by McDermott Will & Emery on

Addressing the Patent Trial and Appeal Board’s (PTAB’s) final determination in an inter partes re-examination, the US Court of Appeals for the Federal Circuit reversed the PTAB’s determination that some claims were supported...more

Lack of Written Support Brews Trouble for Coffee Adaptor Claims

by McDermott Will & Emery on

Addressing the issue of written description, the US Court of Appeals for the Federal Circuit affirmed an International Trade Commission (ITC) decision finding that a patent for a coffee machine adaptor assembly lacked written...more

Fifth Circuit Enforces Reimbursement Provision in One-Page Welfare Plan

The Fifth Circuit upheld the reimbursement and subrogation terms found in a welfare benefit plan’s one-page SPD that also served as the plan document. Plaintiff, a plan beneficiary, received $71,644.77 from the plan to cover...more

[Webinar] Drafting the “Global” Patent Application - June 14th, 10:00am ET

It all starts with drafting. A poorly drafted patent application, more often than not, leads to poor patent protection. The goal of providing enforceable claims starts and ends with a well drafted application. And what may be...more

Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them

In Rivera v. ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the International Trade Commission’s decision that there was no violation of 19 U.S.C. §1337, because the claims of U.S. Patent No. 8,720,320 were...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit:

The big news this week (and it is particularly big news in Tyler and Marshall, Texas) is that the ?Supreme Court rules that a defendant “resides” for purposes of the patent venue statute only ?where the defendant actually ?is...more

Written Description Lacking Where Nothing in the Specification Suggests Inventor Contemplated Claimed Invention

In Cisco Systems, Inc. v. Cirrex Systems, LLC, [2016-1143, 2016-1144](May 10, 2017), the Federal Circuit affirmed in part, and reversed in part the Board’s decision in Inter Partes Reexamination of U.S. Patent No. 6,415,082. ...more

You Can Not Claim What you Don’t Possess – Federal Circuit Holds Fiber Optic Claims Invalid under Section 112

On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems,...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

Understanding the similarities and differences between priority claims in Canada and the U.S.

by Smart & Biggar on

A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. The recent decision of the U.S. Federal Circuit in...more

Probiotics: IP Perspectives on the Microbiome

by Knobbe Martens on

Once considered parasites, free riders, or “opportunistic pathogens,” in recent years the roughly 100 trillion symbiotic bacteria that inhabit the various tissues of the human body have been increasingly recognized for their...more

IPR Denied after Board Finds Asserted PCT Publication Not Entitled to Priority Application’s Filing Date under Pre-AIA 35 U.S.C. §...

by Knobbe Martens on

The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v....more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

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