Posts in Patentability


USPTO issues guidance on patent eligibility of method of treatment claims in light of Vanda Pharmaceuticals

On June 7, 2018, the USPTO issued new guidance to its examining corps in the form of a memorandum discussing the Federal Circuit’s April 13, 2018 decision in Vanda Pharmaceuticals …
By John M. Rogitz
17 hours ago 0

Rethinking Article III Standing in IPR Appeals at the Federal Circuit

In 2011, as part of the American Invents Act (“AIA”), Congress significantly restructured the way in which previously issued patents could be challenged.   In some cases, existing post-issuance …

Iancu: People have a right to know what is patent eligible

While the subject matter of the speech was similar, this speech by Director Iancu was different. It was much more direct and forceful than any of his …
By Gene Quinn
8 days ago 43

Federal Circuit Vacates, Remands After PTAB Fails to Consider Arguments in Reply Brief

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial …
By Steve Brachmann
13 days ago 6

Federal Circuit: No matter how much the advance the claims recite, they are patent ineligible

This case and the passage above merely confirms what we have long known to be true. The magnitude of the innovation does not matter. Whether there is …
By Gene Quinn
20 days ago 34

Federal Circuit expands printed matter doctrine to include information and mental steps

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that …

Lofgren, Issa Denounce Proposed PTAB Claim Construction Changes in Oversight Hearing

found it disturbing that the Director Iancu would circumvent the prerogative of Congress with recently announced proposed PTAB claim construction changes, though she admitted the decision wasn’…
By Steve Brachmann
26 days ago 18

Eligibility Rejections are Appearing in Greater Frequency Across all Computer Related Technology Centers

Four years after the Alice decision, we seem to just now be detecting the full impact of the decision. The initial response by the USPTO resulted in …
By Samuel Hayim & Kate Gaudry
26 days ago 13

Askeladden LLC Submits Another Amicus Brief Advocating Against Tribal Sovereign Immunity for PTAB Proceedings

In this regard, a PTAB proceeding is not a suit in court, but instead an administrative proceeding in which the Patent Office (through the PTAB) takes “a …

Director Iancu worries current state of Section 101 ‘weakens the robustness of our IP system’

Director Iancu: "But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, …
By Gene Quinn
1 month ago 32

Federal Circuit Asked to Reconsider IPR Ruling in Context of Database Search Algorithms

On May 9, 2018, Network-1 Technologies, Inc. filed a combined petition for panel rehearing or rehearing en banc with the United States Court of Appeals for the Federal Circuit, …

Drug Patents and the High Cost of Healthcare: Case of Over-Advocacy for Under-Patentability

The price-tag for non-innovative drug patents, such as these second-wave Restasis patents, is substantial. Indeed, one cannot help but question Allergan’s true motivations for attempting to …
By Arie Michelsohn
1 month ago 11

Patent Subject Matter Eligibility 101

The patents discussed below are all landmark inventions and were conceived by inventors inducted into the National Inventors Hall of Fame (NIHF). Would these ground-breaking inventions, that …
By Manny Schecter
1 month ago 31

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
2 months ago 3

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed …
By James Yang
2 months ago 3