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For most patent prosecutors, the thought of having to re-argue what is believed to be a solid, well-reasoned response to a rejection for a second, third, or even fourth time, is extremely frustrating. Understandably, it is also aggravating for the Examiner to re-read what they believe is a flawed argument. In many cases, the use… Read more »
In the current climate within a first-to-file patent system, it is often desirable to file a patent application as quickly as possible. However, it is important to check whether any foreign filing licenses are required before an application is filed because there may be serious consequences for an inventor and/or applicant if a foreign filing… Read more »
On May 4, 2020, the United States Patent and Trademark Office (USPTO) unveiled a web-based Intellectual Property (IP) marketplace platform “Patents 4 Partnerships,” ( https://developer.uspto.gov/ipmarketplace/search/patents), a searchable database of patents and published patent applications relating to the coronavirus (COVID-19) pandemic that are available for licensing. The Patents 4 Partnership database is searchable by keyword, patent number,… Read more »
Objective indicia (OI) of non-obviousness, sometimes called secondary considerations, can be powerful tools for addressing obviousness rejections during prosecution. The Federal Circuit frequently reminds us that “evidence of secondary considerations may often be the most probative and cogent evidence in the record.”1 But, for this evidence to be probative, there must be a nexus between the… Read more »
Update: Orange Book Listing of Drug Delivery Device Patents After In re Lantus, February 20201 Introduction The U.S. Court of Appeals for the First Circuit recently ruled that Sanofi could potentially be held liable for an antitrust violation for improperly listing an insulin delivery device-related patent in the U.S. Food and Drug Administration’s (“FDA”) Orange… Read more »
It has long been recognized that, at a certain level, almost all patent claims include some abstract concepts. One of the hurdles facing practitioners and Examiners alike in determining subject matter eligibility under Section 101 has been drawing the line between claims that are “directed to” an abstract idea under the first step of the… Read more »
In a recent subject matter eligibility case, the Federal Circuit reversed a district court decision finding that claims covering prenatal DNA testing were patent-ineligible. The Sequenom patents at issue, U.S. 9,580,751 (“the ‘751 patent”) and U.S. 9,738,931 (“the ‘931 patent”), are directed to a method for preparing a DNA fraction from a pregnant human female… Read more »
In Ironworks Patents LLC v. Samsung Electronics. Co.1, the Federal Circuit vacated and remanded the district court’s judgment of noninfringement of claims of U.S. Patent No. 6,427,078 (“the ‘078 patent”) because the district court erred in its construction of the term “camera unit.” While this opinion is nonprecedential, it provides useful insight as to how the… Read more »
In Koninklijke Philips N.V. v. Google LLC et al.,1 the Federal Circuit reaffirmed that the “general knowledge” of a person of ordinary skill in the art can be used to supply a missing claim limitation in an obviousness analysis during inter partes review under 35 USC § 311(b). Google LLC (“Google”) filed a petition with the Patent Trial and Appeal… Read more »
In an opinion focused on claim construction and disavowal, the Federal Circuit in Techtronic Industries co. v. ITC found that a patent’s repeated discussion and focus on providing a passive infrared detector disavowed any products that lack a passive infrared detector.1 The patent at issue (U.S. Patent No. 7,161,319, or ‘319 patent) relates to “movable barrier operators”… Read more »
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