Posts in Patentability


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
15 days 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
20 days 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
27 days ago 13

Inherency Rejections: Combating Inherent Obviousness

An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great …
By Gene Quinn
1 month ago 2

Burden of Persuasion for Patentability of Amended Claims in IPR Stays with Petitioner

After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph …

Federal Circuit says Secondary Considerations Not Part of Prima Facie Obviousness Analysis

Objective indicia must be evaluated before drawing an ultimate conclusion on obviousness, but are not necessarily part of a prima facie “motivation-to-combine” analysis. To prove inequitable conduct …

Crossing the Chasm: Avoiding and Surviving the PTAB

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of …

USPTO, PTAB refuse to follow Supreme Court Nautilus decision

The PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite …
By Gene Quinn
3 months ago 80

Board cannot shift burden of proving patentability to applicant, must articulate reasoning

The Federal Circuit vacated and remanded the Board’s decision, finding that it “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly …

Federal Circuit upholds CBM instituted in conflict with Unwired Planet decision

The U.S. Court of Appeals for the Federal Circuit issued a decision in Return Mail, Inc. v. United States Postal Services (USPS), which affirmed a finding …
By Steve Brachmann
3 months ago 5

Federal Circuit says computer memory system claims patent eligible, not abstract

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice …
By Gene Quinn
3 months ago 45