It's been a while since I last posted, and I apologize for that. (If interested, here's an alert about what's kept me away: a CFAA trial we wrapped up in late July.) But I am back, so let's look at the latest on the Section...more
There now is increased interest about the written description and enablement requirements for patent applications claiming antibodies. This may stem from the recent U.S. Supreme Court decision in Amgen v. Sanofi, finding lack...more
The United States Patent and Trademark Office’s (“USPTO”) Appeals Review Panel (“the Panel”) recently clarified that means-plus-function claims do not require that the specification disclose equivalents. See Ex parte...more
On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more
On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U.S.C. § 112(f), which are commonly referred to as...more
On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution...more
United States Patent and Trademark Office (USPTO) officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means-plus-function and step-plus-function limitations. ...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more
PATENT CASE OF THE WEEK - Schwendimann v. Arkwright Advanced Coating, Inc., Appeal Nos. 2018-2416, et al. (Fed. Cir. May 5, 2020) (unsealed May 13, 2020) - In this recently unsealed precedential opinion, the Federal...more
In a second notice of proposed rulemaking (besides the one for patent eligibility) announced January 4, 2019 and published in the Federal Register on January 7, 2019, the Patent and Trademark Office has proposed guidelines...more
The USPTO has issued updated guidance for examiners and administrative patent judges (APJs) relating to subject matter eligibility under 35 U.S.C. 101 and examining computer-implemented functional claim limitations under 35...more
The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more
Impax Laboratories Inc. v. Lannett Holdings Inc. (No. 2017-2020, 6/28/18) (Lourie, Dyk, Taranto) - Lourie, J. Affirming judgment of no invalidity for claims related to nasal spray for treatment of migraine....more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more
In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more
This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more
Addressing the issue of contempt for violation of a non-final injunction, a divided U.S. Court of Appeals for the Federal Circuit declined to rehear en banc a panel decision that vacated a civil contempt holding for violation...more
Nunc Pro Tunc Assignments Insufficient To Confer Retroactive Standing - In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a...more
An en banc decision from the Federal Circuit last week overruled a line of cases governing the interpretation of functional claim language, calling into question how courts, the PTO, and industry will treat such language in...more
In Williamson v. Citrix Online, announced on June 16, the Court of Appeals for the Federal Circuit ruled in a partially en banc opinion that claims expressed in terms of functionality can be subject to statutory requirements...more