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, …
By Andrew Berks & Gene Quinn
5 days ago 17

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 …
By Daniel Hanson
5 days ago 3

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 …
By Eileen McDermott
19 days ago 12

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. …
By Eileen McDermott
22 days ago 0

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 …
By Butch Laker
1 month ago 4

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. …
By IPWatchdog
1 month ago 2

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 …
By James Nurton
1 month ago 1

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 …
By Jay S. Pattumudi
2 months ago 12

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.…
By IPWatchdog
2 months ago 6

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. …
By Nancy Braman
2 months ago 1

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 …
By Gene Quinn
2 months ago 56

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 …
By Eileen McDermott
2 months ago 18

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 …
By Gene Quinn
2 months ago 2