Posts Tagged: patentability requirements
How Misaligned Incentives Are Now Killing Us
Today, like so much of the rest of the world, the United States is faced with many shortages due to the coronavirus pandemic, including personal protective equipment, …
Focusing on the Details: What Two Recent USPTO Matters Can Teach Us About Patentability Analyses
Two matters currently pending before the United States Patent and Trademark Office illustrate the consequences of focusing upon details of a claim rather than upon the claimed …
CAFC Holds Sequenom’s Prenatal DNA Patent Claims Eligible Under 101
The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed a district court decision finding certain claims of two patents covering prenatal DNA testing …
Consumer 2.0 v. Tenant: CAFC Skirts Another 101 Analysis with Rule 36
Last week, the U.S. Court of Appeals for the Federal Circuit issued a Rule 36 judgment in a patent eligibility case, Consumer 2.0, Inc. v. Tenant Turner, Inc., …
CAFC Partially Reverses PTAB on Claim Construction Analysis, Says Prosecution History Matters
The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. …
PTAB Delivers Win for Apple in IPR on CDMA Patent
In IPR 2018-01472, brought by Apple Inc., HTC Corporation, HTC America, Inc., and ZTE (USA) Inc. (Apple), the Patent Trial and Appeal Board (PTAB) last week determined …
Inherency in Obviousness: Lessons From Persion v. Alvogen
When can an inherent property add patentable weight in the context of obviousness? Over the years, the Federal Circuit has shed light on this question in a …
Four Judges Dissent from CAFC Denial of Rehearing in Generic Osteoarthritis Drug Case
The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied HZNP Medicines LLC’s (Horizon’s) request for rehearing in HZNP Medicines LLC v. …
WIPO Publishes Submissions on AI and IP Policy
Twenty-two member states of the World Intellectual Property Organization (WIPO), more than 100 organizations, and over 100 individuals have submitted comments and suggestions in response to WIPO’s Draft …
Lessons of Wisdom Following Athena SCOTUS Denial and October 2019 Patent Eligibility Guidance Update
This article relates to key practice pointers for making a claim patent-eligible subject matter according to the U.S. Patent and Trademark Office’s (USPTO’s) October 2019 …
Federal Circuit Affirms PTAB Obviousness Finding, But Warns Samsung Board’s Authority to Cancel Claims Has Limits
The Federal Circuit in a precedential decision issued earlier today affirmed the Patent Trial and Appeal Board’s finding that Claim 11 of Prisua Engineering Corp.’s U.…
CAFC Rules PTAB Did Not Err in Finding Philips Patent Obvious in Light of General Knowledge of POSITA
On January 30, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB) decision rendering claims 1-11 of U.S. …
Time to Wake Up: Stakeholders Must Compromise to Save the U.S. Patent System
Things are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and …
Supreme Court Denies Trading Technologies, ChargePoint Petitions
The U.S. Supreme Court today denied two petitions for certiorari filed by Trading Technologies and one by ChargePoint, Inc. asking the Court to review their cases …
Background Pitfalls When Drafting a Patent Application
Generally speaking, the first section of a patent specification will be the Background. The Manual of Patent Examination and Procedure (MPEP) recommends that the Background be broken …
