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The Federal Circuit recently reversed and remanded a district court’s denial of attorney’s fees to ADS after Rothschild sued ADS for infringement.1 The Federal Circuit found that the lower court abused its discretion for (a) failing to consider Rothschild’s willful ignorance of the prior art; (b) misjudging Rothschild’s conduct in other litigation and (c) improperly conflating… Read more »
A proper invocation of §112 ¶ 6 means-plus-function claiming requires that the claim recite the functionality of the purported “means,” and not just structure, the Federal Circuit decided in Skky. 1 Despite the presumption triggered by the word “means” in the claim term “wireless device means” and the Examiner’s understanding of the claim term as invoking §112… Read more »
Before KSR, 1 it was thought that obviousness under 35 USC § 103 could not be demonstrated by showing that a particular combination was obvious to try. The Supreme Court clarified that “when there is a . . . problem and there are a finite number of identified, predictable solutions,” and if pursuing the known options leads… Read more »
Over the past seven years, the Supreme Court decisions in Mayo1, Myriad2 and Alice3, and their impact on patent eligible subject matter, have dominated the intellectual property landscape for both patent practitioners and litigators. Former Chief Judge Michel even recently discussed the significant (and many consider, negative) impact that these decisions have had patents and innovation4. Technologies ranging from… Read more »
In a recent appeal of a rejection based on the written description requirement, the Patent Trial and Appeal Board (the “Board”) found a claimed invention directed to a featherseal structure to be sufficiently supported by the illustration of a single embodiment in the specification.1 Under the written description requirement of 35 U.S.C. § 112(a) or §… Read more »
In Life Technologies, the Supreme Court held that “a single component does not constitute a substantial portion of the components that can give rise to liability under §271(f)(1).” .1 The disputed patent2 claims a toolkit for genetic testing, which includes five components. Life Technologies sublicensed the patent from Promega and manufactured all but one component, the enzyme Taq polymerase, in… Read more »
In a recent appeal from a § 103 rejection, the Patent Trial and Appeal Board (the “Board”) re-emphasized the principle that there must be “an apparent reason to modify the prior art as proposed by the Examiner,” and that such reason must have a factual basis.1 Finding the reasoning from the Examiner to be inadequate, the… Read more »
For many patent practitioners, using expert declarations under 37 C.F.R. § 1.132 to rebut an obviousness rejection under 35 U.S.C. § 103, has become almost the norm, rather than a unique occurrence. Having an inventor or other technical expert opine on some aspect of the claims, prior art, or unexpected result or property of the… Read more »
The Federal Circuit reversed a district court’s finding that Watson infringed Shire’s patent directed to a controlled-release oral pharmaceutical composition containing mesalamine, used to treat inflammatory bowel diseases.1 Shire’s claims recited that the pharmaceutical composition contained an inner lipophilic matrix and an outer hydrophilic matrix. The opinion focused on the claim’s recitation regarding the outer… Read more »
Another layer of complexity has been added to patent prosecution under the District Court of Michigan’s expanded interpretation of the obviousness type double patenting (“ODP”) doctrine.1 The district court held that a continuation application can, in certain circumstances, invalidate its earlier filed and earlier issued parent under ODP. If upheld, patent prosecutors must carefully consider the… Read more »
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