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A patent attorney who was fired for refusing to file patent applications he thought lacked merit continues to have his day in court for wrongful termination. Patent practitioners are required to adhere to the Rules of Professional Conduct (RPC) set forth in 37 C.F.R. §§ 11.301-309. These RPCs include that: A practitioner shall not bring… Read more »
In a recent Federal Circuit decision, the court found that a single statement made during prosecution of a patent family lent sufficient clarity to the claim term at issue. 1 The patent at issue is part of a patent family that involves wireless digital audio music transmission. 2 The patents describe a “wireless digital audio music system [that]… 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 »
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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