Posts Tagged: patent claims
Introduction to Patent Prosecution: Patent Practice for Beginners
You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. This is why Gene Quinn and John White designed …
Showing ‘Meaningful Limits’ in Patent Claims
The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance provides that if an abstract idea represented in one or more claim elements is integrated into a practical …
District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen
Patents covering an antibody are often claimed by the antibody’s function (the residues where it binds to the antigen) rather than its structure (amino-acid sequence). This …
Abstractness is not the malleable concept the Supreme Court thinks
If the claim is directed to an abstract idea, then abstractness is an essential property of the claimed subject matter as a whole. As such, a claim …
Federal Circuit Treatment of ‘Commercial Success’ in Hatch-Waxman Cases
In order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects …
Software Patent-Eligible Subject Matter: Claiming Improvements in Computer Functionality
Particularize the claims. This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware …
Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review
The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? ... PGRs are …
The Broadest Reasonable Claim Interpretation Cannot Exceed the Specification
TF3’s patent-in-suit is for a “hair styling device” that automated the curling of hair. TF3 appealed the decision of the Board in an IPR requested by …
The Supreme Court, the Federal Circuit, and the Patent Office Walk Out of an Appellate Review Bar: Changing Standards For Appellate Review of IPR Institution Decisions
This article reviews recent Federal Circuit and Supreme Court decisions addressing the scope of appellate review of institution of inter partes review (IPR) by the Patent Trial …
Denying Inducement to Infringe in Face of a Drug Label: A Fool’s Errand?
Proving inducement to infringe requires showing that the accused infringer possessed “specific intent” to infringe. In pharmaceutical cases, particularly those arising in the Hatch-Waxman framework, specific intent …
Patent Eligibility Determinations in Life Sciences Patent Cases
This article examines Supreme Court and Federal Circuit analyses of patent eligibility under 35 U.S.C. § 101 where the patent claims at issue were directed to Life Sciences-related …
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 …
Patenting Antibodies: Written Description Considerations in Antibody Patents
The Amgen v. Sanofi decision put most functional antibody claims into question, including epitope and competitive binding claims, as well as antibody claims based on a newly …
USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials
On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS …
The CAFC Split Non-precedential Decision in Exergen v. Kaz Raises Interesting Issues About Eligibility Determinations
In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods …
