Posts in Patentability


Is there a Light at the End of the Alice Tunnel?

Maybe I’m being too optimistic. But in a pair of decisions issued within a week of each other, Berkheimer v. HP and Aatrix Software v. Green …
By Meredith Addy
4 days ago 29

Nordt Succeeds in Appeal to Federal Circuit on Knee-Brace Application

Despite its ultimate conclusion, the Court observed that Nordt failed to “persuasively or precisely” articulate to the Board “what structural limitation is imparted” by the “injection molded” …

Berkheimer v. HP: Federal Circuit says patent eligibility a factual determination inappropriate for summary judgment

Berkheimer is also equally important, if not more important, because it stands for the proposition that questions of fact can and do underline patent eligibility determinations. This …
By Gene Quinn
6 days ago 14

Federal Circuit says Finjan virus-screening method not abstract, is patent eligible

In Finjan, Inc. v. Blue Coat Systems, Inc., the United States Court of Appeals for the Federal Circuit recently affirmed-in-part, reversed-in-part, and remanded the case to the …
By John M. Rogitz
1 month ago 0

Court Affirms Inherent Disclosure of Monsanto Soybean Claims

The Federal Circuit affirmed the rejection of several claims in a patent owned by Monsanto... Extrinsic evidence is permissible to interpret an allegedly anticipating references and to …

PTAB Facts: An ugly picture of a tribunal run amok

69% of cases reaching a final decision by the PTAB have all claims invalidated. 82.5% of patents reviewed by PTAB in a final decision are found defective... As the …

Patent-Ineligibility of Medical Diagnostics, Life Sciences Discoveries Arrests U.S. Progress

In a research project funded by the Austrian Science Fund (FWF), evidence emerged that a higher expression of the GIRK1 protein in malignant tissue samples was linked …
By Steve Brachmann
2 months ago 3

Federal Circuit Curtails Alice: Economic arrangements using generic computer technology ‘significant, if not determinative’

On December 8, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. (2016-2442) that …
By John M. Rogitz
2 months ago 51

Surviving Alice: Sufficient Inventive Concept Must be in Claim, Not Specification

In Two-Way Media Ltd v. Comcast Cable Communs., LLC, (Opinion for the court, Reyna, J.), the Federal Circuit affirmed a district court decision finding four patents owned …

Federal Circuit: Less Preferred Alternative is not Teaching Away

In an obviousness inquiry, material prior art references disclosing combinations of claimed limitations cannot be disregarded based on a drug product’s commercial viability or FDA approval. …

Smart Systems decision a sad reminder of deleterious state of U.S. patent eligibility law

The Federal Circuit evidences a great deal of myopia to declare that these patents are not directed to a technological advance, even if they can string together …
By Steve Brachmann & Gene Quinn
4 months ago 6

Merck Process for Stabilizing Antibiotic Compound Invalid as Obvious

The District of Delaware found that one of two patents asserted by Merck was not invalid and infringed, and the other patent, while infringed, was invalid as …

Patent Drafting: Proving You’re in Possession of the Invention

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement …
By Gene Quinn
4 months ago 3

CAFC Rules Mass Transit Fare System Claims Patent Ineligible

In Smart Sys. Innovations, LLC v. Chi. Transit Auth., the majority of a Federal Circuit panel affirmed a district court’s holding that several claims of four …

Patent Drafting: Understanding the Enablement Requirement

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology …
By Gene Quinn
4 months ago 13