Posts Tagged: "CAFC"

Amici Speak Up in En Banc Challenge at CAFC to Rosen-Durling Framework for Design Patent Obviousness

This week, 10 amici weighed in at the U.S. Court of Appeals for the Federal Circuit (CAFC) in a rare en banc review of the court’s January, 2023, decision in LKQ Corporation v. GM Global Technology Operations. That decision affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

A Comment on In re Cellect: The Patent Bar Must Push for Eliminating ODP Altogether, Not Interpreting it More Favorably

In an IPWatchDog post of September 6, 2022, Anthony Prosser and I traced the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (ODP). We confirmed (as its name indicates) that no Congressional statute has ever codified this doctrine. It is ultra vires because Congress has the sole right to create patent law…. In the Cellect decision issued yesterday, the Federal Circuit stretches the word “disclaimer” in Section154(b)(2)(B) beyond credibility as justification for the ODP doctrine itself and assumes that is what Congress was talking about without actually saying it (stating with agreement that “The Board also reasoned that terminal disclaimers arise almost exclusively in situations to overcome ODP rejections, and so Congress, by addressing terminal disclaimers in §154, effectively addresses ODP”).

CAFC Issues Precedential Ruling on Proper Analysis for Patent Term Adjustment in Double Patenting Cases

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in In re Cellect holding that patent term extension (PTE) and patent term adjustment (PTA) are not the same for purposes of an obviousness-type double patenting (ODP) analysis. Specifically, the court said that “ODP for a patent that has received PTA, regardless whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.” The opinion was authored by Judge Lourie.

CAFC Says PTAB Erred in Analyses of Nexus and Objective Indicia of Nonobviousness

In a precedential decision issued today, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a Patent Trial and Appeal Board (PTAB) ruling that found all claims of a Volvo Penta patent unpatentable as obvious. The court found that the PTAB erred in its analysis of nexus between the claims and evidence of secondary considerations, as well as in its weighing of the objective indicia of nonobviousness.

APPLE JAZZ Mark Owner Says Apple Can’t Attempt to Reverse CAFC via TTAB

On August 18, the owner of the APPLE JAZZ trademark filed an opposition to Apple’s motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB). In its motion, the tech giant asked the TTAB to allow the company to remove “live performance services, as well as related services,” from the application. In July, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied Apple’s request to rehear a decision that effectively canceled the tech company’s application to register the APPLE MUSIC mark.

Blue Gentian v. Tristar Underscores the Importance of Naming the Correct Inventors on a Patent

Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights…. To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent.

CAFC Dismisses Pro Se Inventor’s Challenge to PTAB’s Obviousness Ruling

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Shamoon v. Resideo Technologies, Inc. affirming a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated patent claims covering a communication system for accessing geographically remote locations. While the decision was nonprecedential, the Federal Circuit also struck down constitutional challenges to the PTAB proceedings raised by the pro se inventor and patent owner.

CAFC Says PTAB Must Consider Petitioner’s Arguments Under New Claim Construction Presented Post-Institution

The U.S. Court of Appeals for the Federal Circuit (CAFC) held in a precedential decision today that an inter partes review (IPR) petitioner must be given the opportunity to present evidence of anticipation or obviousness under a new claim construction when that construction is first proposed by a patent owner in its response following the institution decision. The court ultimately vacated the decisions and remanded to the PTAB to reconsider.

Special Committee Charges Newman with ‘Serious Misconduct’, Blames Her for Delayed Transcript

The U.S. Court of Appeals for the Federal Circuit’s Special Committee that is investigating Judge Pauline Newman for misconduct today released a number of additional documents, including a 319-page one dated July 31 recommending Newman be suspended from taking on case assignments for one year, “or at least until she ceases her misconduct and cooperates such that the Committee can complete its investigation.” The report included a number of Exhibits and a transcript of an April deposition, but notably missing is the transcript of the July 13 hearing. A statement from the Committee says it “is prepared to release that transcript, but has been waiting for proposed redactions from Judge Newman since July 27. Once Judge Newman proposes any redactions or confirms that she has none, the transcript will be released promptly.”

Newman Slams CAFC’s Flawed Eligibility Precedent in Dissent to 101 Loss for Realtime Data

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s dismissal of Realtime Data, LLC’s patent infringement claims based on invalidity of the asserted claims under 35 U.S.C. § 101. In a previous ruling, the CAFC sent the case back to the district court asking for a more fleshed out Section 101 analysis. Judge Pauline Newman dissented to today’s judgment, calling current eligibility jurisprudence a “morass” and saying she would have remanded the case for determination of validity under Section 112, or possibly Sections 102 and 103.

When Will the Federal Circuit’s Special Committee Release the Transcript of the July 13 Hearing in the Newman Investigation?

On June 20, 2023, the Special Committee of the Judicial Council of the Federal Circuit that is investigating a complaint identified against Judge Pauline Newman issued an Order denying Judge Newman’s request to make a July 13 hearing open to the public, but said it would consider publishing a redacted transcript of the hearing that protects witnesses’ identities. However, as of today, August 1, no transcript has been made available. In a Clause 8 interview published earlier today, Judge Newman’s counsel said he is under a secrecy order with respect to discussing the hearing but hinted that the process did not allow for a mutual exchange and was rather more akin to an oral argument. So, as difficult as it is to believe, perhaps the better question is “if” the Federal Circuit’s Special Committee will release a transcript at all—ever. 

CAFC Affirms Mixed Ruling on Pulmonary Hypertension Drug Patent, Noting ‘Safety and Efficacy’ is for FDA

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday issued a precedential decision affirming a district court’s mixed ruling in a patent infringement case involving two patents owned by United Therapeutics on the pulmonary hypertension drug, Tyvaso.
U.S. Patent 10,716,793 and U.S. Patent 9,593,066 cover methods of treating pulmonary hypertension and pharmaceutical compositions comprising treprostinil—Tyvaso is an inhaled solution formulation of treprostinil. United Therapeutics also owns a new drug application (NDA) for Tyvaso, No. 022387.

Newman on Bloomberg Podcast: I Was Told ‘Go Quietly or We’ll Make Your Life Miserable’

As we await a transcript of the July 13 hearing that took place in the Special Committee of the Judicial Council of the Federal Circuit’s investigation into Judge Pauline Newman’s alleged unfitness to remain on the court, Newman spoke with Bloomberg this week as a guest on its “On the Merits” podcast. She recounted for host David Schultz that she was told when confronted with the allegations, “Just go quietly or we’ll make your life miserable’; that was exactly the way it was presented to me.”

CAFC Says Pure Post-AIA Patents Are Not Subject to Interference Proceedings

On July 14, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in SNIPR Technologies Limited v. Rockefeller University reversing a decision by the Patent Trial and Appeal Board (PTAB) that invalidated all claims from five SNIPR patents. In reversing, the Federal Circuit found that the PTAB erroneously subjected SNIPR’s patents to interference proceedings that Congress meant to eliminate when it enacted the America Invents Act (AIA) of 2011.

Federal Circuit Says User-Matching Patent Claims are Abstract in Precedential Eligibility Decision

In a precedential decision authored by Judge Tiffany Cunningham on Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled that two patents for methods of connecting users based on their answers to polling questions were directed to patent ineligible subject matter under 35 U.S.C. § 101. U.S. Patent Nos. 9,087,321 and 10,936,685 are owned by Trinity Info Media, LLC and are titled “Poll-Based Networking System.” The U.S. District court for the Central District of California granted Covalent, Inc.’s motion to dismiss under Rule 12(b)(6), finding that the claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept.