Ways to Amend the Claims in the Patent Invalidation Proceedings
The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more
Limitation by “parameter features” is a love-hate claim drafting approach. It’s highly praised by applicant/patentee because it leads to great the difficulty in searching and finding prior arts that directly disclose the...more
In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more
A federal district court in Utah has dismissed patent claims directed to intermittent fault detection (IFD) technology for electrical systems in aircrafts. The court determined that the asserted claims are patent-ineligible...more
Quantum computing, a field that harnesses quantum physical phenomena such as superposition and entanglement to perform complex computational tasks, is an emerging technology area. The uncertainties regarding the feasibility...more
Where an alleged infringer administers a substance A to a subject, and the substance is subsequently transformed to a therapeutic agent X inside the subject’s body, does the administration of the substance A constitute an act...more
A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more
This past Thursday, the Board of Appeals of the European Patent Office released the minutes of oral proceedings in which the Board rendered a decision in closely watched appeals relating to Broad patents directed to...more
The Federal Circuit has affirmed two decisions of the Patent Trial and Appeal Board (PTAB or Board) that upheld some claims of a patent owned by Personal Genomics Taiwan, Inc. (PGI) and invalidated other claims. Pacific...more
When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more
Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of...more
On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a consolidated decision in cases G1/22 and G2/22 clarifying a common issue regarding the validity of a priority claim made at the...more
On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more
Hosted by C5 Group, the 21st Annual Life Sciences IP Summit returns for another exciting year with curated programming with speakers from the pharma, biotech and medical device industries that will provide practical insights...more
On May 18, the U.S. Supreme Court in Amgen Inc. v. Sanofi unanimously affirmed the Federal Circuit’s finding that Amgen’s patent claims to cholesterol-lowering antibodies were not enabled under 35 U.S.C. § 112. The Court...more
The Federal Circuit has held that the claims of a “SNALP” patent were inherently anticipated by prior art. In Arbutus Biopharma Corp. v. ModernaTX, Inc., Arbutus appealed a decision in an inter partes proceeding by the Patent...more
Hosted by C5, the 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe returns 23-24 May, at the DoubleTree by Hilton Amsterdam Central Station, Amsterdam with curated programing for you to gain the knowledge and...more
We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more
On December 16, in Adasa Inc. v. Avery Dennison Corporation, the Federal Circuit upheld patentability of claims reciting an RFID transponder with storage for a particular type of serial number—affirming the district court’s...more
The Federal Circuit has ruled that the definition of a claim term in a patent incorporated by reference into the patent at issue doesn’t limit the claims in the patent at issue. In Finjan LLC v. ESET, LLC, Finjan sued...more
In INVT SPE LLC v. ITC, the Federal Circuit affirmed an International Trade Commission (ITC) decision that held INVT’s patent claims were not essential to the LTE cellular communications standard. According to the court, INVT...more
On October 3, 2022, the majority of the amendments introduced by the Rules Amending the Patent Rules on June 2, 2022, came into force and effect. The amendments aim to streamline the patent examination process and bring...more
The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US...more
The ACC last month hosted the San Francisco Bay Area Life Sciences CLE Conference, giving TransPerfect Legal Solutions (TLS) team members the opportunity to learn and connect with colleagues. One of the panels, moderated by...more
A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more