Posts Tagged: Chief Judge Sharon Prost


Amgen v. Sanofi: A well characterized antigen insufficient for written description of an antibody

In what appears to be a clear departure from the past, in Amgen, the Federal Circuit has rejected the test, basing its rejection on the ground that …

Beware Waiver: Recovery Not Permitted on Damages Theories Not Presented/Preserved at Trial

In Promega Corporation v. Life Technologies Corporation, on remand from the Supreme Court, the Federal Circuit affirmed district court rulings that granted Life Technologies’ motion for judgment …

Federal Circuit affirms PTAB invalidation of Uniloc patent which wasn’t invalid in 65 district court cases

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a …
By Steve Brachmann
2 months ago 9

Critiques Alone Are Insufficient to Outweigh Expert Experiments and Testimony

In Organik Kimya AS v. Rohm & Haas Co., Organik Kimya AS (“Organik”) appealed the decisions of the Patent Trial and Appeal Board (“Board”) in two related inter …

Patent-Ineligible Claims Dismissed Based On Intrinsic Evidence

The Federal Circuit heard the case of Secured Mail Solutions LLC v. Universal Wilde, Inc., where the Appellant, Secured Mail Solutions LLC (“Secured Mail”) appealed from the …

Federal Circuit says inequitable conduct can be inferred from activities in a later patent litigation?

Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent …
By Alison McGreary & Ryan Cagle
3 months ago 6

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 …

Patentee Fails to Prove Equivalents did not Ensnare the Prior Art

Crafting a proper hypothetical claim is a prerequisite to whether a theory of infringement under the doctrine of equivalents would also ensnare the prior art. The burden …

Claims can be invalidated for reasons first articulated in rebuttal to a Patent Owner’s arguments in an IPR

Idemitsu Kosan Co. v. SFC Co., the Federal Circuit affirmed the Board’s decision to invalidate as obvious certain patent claims directed to a device that emits …

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 …

Federal Government Not Barred from Petition for CBM Review

In a case of first impression, a majority of a Federal Circuit panel held that the U.S. Postal Service and the United States (collectively, “USPS”) were …

Federal Circuit says U.S. government is a ‘person’, can file CBM to challenge patents

the Federal Circuit also upheld a controversial ruling of the PTAB, which determined that the United States has standing to bring a CBM challenge. Legally speaking, the …
By Gene Quinn
5 months ago 21

Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery

In re N.C. Lottery, Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” in connection with lottery services and games to …

Music Artist will.i.am Cannot Trademark “I Am”

In re i.am.symbolic, llc, William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on …

Where parties dispute proper scope of claims, Board must provide an explicit claim construction

The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed... When parties dispute the proper …