August 9, 2019 | Blog | By Marc Morley, Jeff Giering
On July 30, 2019, the Federal Circuit held that retroactive application of IPR (inter partes review) proceedings to pre-AIA (America Invents Act) patents is not an unconstitutional taking under the Fifth Amendment (Celgene Corp. v. Peter; appeals from IPR2015-01096, IPR2015-01102, and IPR2015-01103).
August 9, 2019 | Blog | By Marc Morley, Gali Steinberg-Tatman
The Federal Circuit in Amgen Inc. v. Coherus Biosciences Inc. affirmed a district court decision that once certain subject matter is clearly and unmistakably surrendered during prosecution, the patentee is barred from asserting an infringement claim under the doctrine of equivalents.
Representations Made by a Patentee during Foreign Prosecution May Be Used in Claim Construction for U.S. Patents
July 22, 2019 | Blog | By Marc Morley, Melissa Brayman
Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement and/or validity.
July 12, 2019 | Blog | By Christina Sperry
In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying the U.S. Patent and Trademark Office’s January 2019 guidance for determining subject matter eligibility under 35 U.S.C. § 101. The decisions focus on whether claims integrate a judicial exception into a practical application so as to be subject matter eligible.
July 2, 2019 | Blog | By Christina Sperry
The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that limits the scope of an applicant’s issued claim. The Federal Circuit’s recent decision in UCB, Inc. v. Watson Laboratories Inc. helps show how this situation can happen and how applicants can help prevent an examiner’s decision from adversely affecting patent scope.
June 28, 2019 | Blog | By Michael Van Loy, Justin J. Leisey
The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole. The case, Regents of the University of Minnesota v. LSI Corporation and Avago Technologies U.S. Inc. (Fed. Circ., 2018-1559), included the review of six Patent Trial and Appeal Board (PTAB) IPRs where the Regents of the University of Minnesota (UMN) filed motions to dismiss based on state sovereign immunity.
Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations
June 12, 2019 | Blog | By Christina Sperry, Paul Brockland
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 Williamson v. Citrix decision in 2015. To help answer some of those pleas, the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7, 2019 to address issues under 35 USC § 112.
June 10, 2019 | Blog | By Michael Renaud, Asa Kling, Marguerite McConihe, Derek Constantine
The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions. With these questions, however, come significant practical issues that businesses, legal practitioners, and governments need to address proactively. Israel is embracing the challenge.
May 20, 2019 | Blog | By Marc Morley, Melissa Brayman
Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy. He has made strengthening the U.S. patent system a core part of his mission responsibilities. Director Iancu has been travelling across the country and speaking with various patent stakeholders. As part of this effort, he met with BIOCOM’s Board of Directors and Intellectual Property Committee in San Diego on April 18, 2019.
May 15, 2019 | Blog | By Ken Jenkins, Jeff Giering
We previously reported here on a Patent Trial and Appeal Board (PTAB) decision involving a case in which a patent eligibility rejection was overcome by replacing a “comparing” step with a recitation that the sample is from a particular patient population. However, because the eligibility rejection was dropped by the examiner before appeal, the PTAB did not revisit the issue.
April 17, 2019 | Blog | By Christina Sperry
The Federal Circuit’s decision in ATI Technologies ULC v. Iancu (April 11, 2019) highlights the proper standard to use in evaluating whether a claimed invention was reduced to practice before the effective date of a prior art reference.
April 9, 2019 | Blog | By Christina Sperry
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products, Inc. (March 26, 2019) considers the situation where a patentee wants a preamble to be a required claim limitation, unlike the more typical situation where a patentee does not want a claim preamble to be limiting, such as in Pacing Technologies v. Garmin International previously discussed HERE. The court deciding in Arctic Cat that the preambles at issue were not required claim limitations highlights important considerations for patent application drafting and for crafting post-issuance arguments.
February 6, 2019 | Blog | By Christina Sperry, Elissa Kingsland
On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35 U.S.C. § 154(b), which defines three kinds of United States Patent and Trademark Office (USPTO) delays, “A” delay, “B” delay, and “C” delay, and sets forth certain reductions from the summation of the Type A, B, and C delays. One of these reductions relates to Applicant delays. For an overview of PTA, see our prior articles here and here.
January 30, 2019 | Blog | By Christina Sperry
As 2019 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2018. According to many readers, hot topics included handling IDSs and obviousness during U.S. patent prosecution, blockchain, PTAB rules, and subject matter eligibility under Section 101.
November 27, 2018 | Blog | By Christina Sperry, Elissa Kingsland
This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications. While Part 1 is a general overview of how to make a proper priority claim, this article addresses how to make a timely post-filing priority claim in an application and how to correct an improper priority claim. Timeliness is crucial to avoid high fees and ensure that an earlier priority date is not lost. The procedures discussed below are post-America Invents Act (AIA) procedures applicable to applications and issued patents filed on or after March 16, 2013.
November 19, 2018 | Blog | By Ken Jenkins, Jeff Giering
Under the Mayo/Alice test for patent eligibility, answering the questions of whether any particular claim is “directed to” a “judicial exception” without “significantly more” remains in many ways a substantial and unpredictable challenge for U.S. patent applicants in the diagnostic space. In cases where the detection processes are typically deemed “routine and conventional” (e.g., PCR) and the targets are known (e.g., expression of a known gene), claims must be crafted in ways that avoid rejections for both patent eligibility and anticipation and/or obviousness over the prior art. The recent PTAB decision in In re Srivastava et al. expressly addresses obviousness in this context, while highlighting a possible strategy for dealing with patent eligibility challenges as well (Appeal 2017-1981, Application 13/974,007, decided October 22, 2018; hereafter “In re Srivastava”).
November 7, 2018 | Blog | By Michael Renaud, Marguerite McConihe
On November 1, 2018, the European Patent Office (“EPO”) issued new guidelines for the patentability of artificial intelligence (“AI”) and machine learning (“ML”) inventions which indicate that applications within this subject matter may be treated as largely unpatentable. The new guidelines, G-II 3.3.1, provide that AI and ML are “based on computational models and algorithms for classification, clustering, regression and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis.” These “computational models and algorithms” are, according to the guidelines, “per se of an abstract mathematical nature.”
October 2, 2018 | Blog | By Bradley Loos
Regulatory compliance is often treated as completely independent from development or enforcement of patent rights. This situation is not helped by the absence of coordination between the U.S. Food and Drug Administration (FDA) and the U.S. Patent and Trademark Office (USPTO). Still, companies must understand and appreciate the impact regulatory submissions may have on their patent portfolio.
June 19, 2018 | Blog | By William Geary, Linda Azrin
Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.
Personalized Medicine Gets a Boost from Federal Circuit’s Vanda Pharma Decision – PART II: Enforcement
May 1, 2018 | Advisory | By Muriel M. Liberto, PhD, Esq., Jennifer Dereka
The Federal Circuit’s decision in Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. (2016-2707, 2016-2708 April 13, 2018) provided some good news on the subject matter eligibility front for innovators and other stakeholders in the personalized medicine space, as discussed in a previous post.
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