Posts in IP News

To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”

Federal Circuit Affirms Board: No Interference-in-Fact for CRISPR-Cas9 Technology

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

Federal Circuit: Presence of a Blocking Patent Can Negate Strong Objective Indicia of Nonobviousness

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and (2) whether secondary considerations such as solving a long-felt need demonstrated nonobviousness… Strong objective indicia such as solving a long-felt need may be insufficient to prove nonobviousness when a blocking patent deters others from an improvement.

Federal Circuit Affirms PTAB’s Finding of Implicit Disclosure

The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence.

USPTO Substantially Revises PTAB Standard Operating Procedures

Earlier today the USPTO announced the substantial revision of Standard Operating Procedures (“SOPs”) for the paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions deliver upon the repeated promises of USPTO Director Andrei Iancu to increase transparency, predictability, and reliability across the USPTO. These new SOPs update the procedures based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with AIA trial proceedings. These new SOPs are a major change to how PTAB panels will be comprised, and how precedential opinions will be designated. Given Director Iancu’s speeches, actions and apparent desire to have a more patent owner and innovator friendly Patent Office, these revisions will likely be game changing.

Registering your website with the Chinese government?

Doing business in China is exciting and potentially lucrative; however, there are “hidden” traps. Most of these hidden traps have been extensively discussed in the Western world – for example, China’s unique subclass system and its massive counterfeiting issue. One area in which we haven’t seen a lot of discussion but has certainly triggered some headaches is the idea – or rather, the requirement – that a business should “register” its website with the Chinese government.