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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 »
In two recent companion cases, the Federal Circuit upheld the Board’s decision that claims related to administering a natural stereoisomer to treat symptoms of folate deficiency would have been obvious. During the inter partes review, the Board considered two prior art references: a European patent application that discloses treating elevated levels of homocysteine, often associated with folate… Read more »
The patent eligibility of diagnostic testing methods remains uncertain after the Federal Circuit refused to rehear Ariosa v. Sequenom.1 In Ariosa, the Federal Circuit panel found that Sequenom’s patent on fetal DNA testing was patent ineligible, despite noting the high commercial value of the technology. The panel concluded that the claims failed Mayo’s2 two step analysis for patent eligibility. The… Read more »
The Federal Circuit vacated the PTAB’s finding of nonobviousness of Verinata’s patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board.1 The Federal Circuit remanded because it couldn’t conclude whether the Board erred based on the PTAB’s opinion. The Board’s language was too vague to come to a definitive conclusion… Read more »
Summary At the end of last year, in Par Pharmaceuticals, the Federal Circuit affirmed the doctrine of inherent obviousness, but ultimately found that the defendants had not demonstrated that the claim limitation missing in the prior art was “necessarily . . . present, or the natural result of the combination of elements explicitly disclosed by… Read more »
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