Archive


Category: Federal Circuit

  • Top Stories of 2021: #4 to #6

    By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 15th annual list of top patent stories. For 2021, we identified nine stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and […]

  • Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

    By Kevin E. Noonan — When does the absence of evidence turn into evidence of absence, and when does such absence amount to an adequate written description of the absence of a step of a method claim? This is a question that comes readily to mind when reading the Federal Circuit’s opinion (and Chief Judge […]

  • Alpek Polyester, S.A. v. Polymetrix AG (Fed. Cir. 2021)

    By Kevin E. Noonan — While the Federal Circuit has patent law as its principal focus, as a U.S. Circuit Court of Appeals, questions come before the Court on more mundane, procedural matters (which, sometimes being dispositive, does not reduce their importance to the parties and occasionally the rest of us). One such case was […]

  • Quest Diagnostics Investments LLC v. Hirshfeld (Fed. Cir. 2021)

    By Donald Zuhn –- Earlier today, the Federal Circuit affirmed the final determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board finding claims 1, 2, and 4-14 of U.S. Patent No. 8,409,862 unpatentable as either anticipated or obvious. The ‘862 patent is directed to using mass spectrometry to detect low levels […]

  • Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — There are some cases where the Federal Circuit makes its decision based on the eternal verities of patent law (insofar as there are any eternal verities in patent law). One such decision arose earlier this month when the Federal Circuit affirmed a determination of non-obviousness by the Patent Trial and […]

  • Biogen Int’l GmbH v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — As is well-known, Congress established the Federal Circuit as a circuit court of appeals to harmonize U.S. patent law in an environment where regional Circuit Courts had developed their own judicial interpretations of the patent statute. As a consequence, it was often to a party’s benefit to choose to litigate […]

  • Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A. (Fed. Cir. 2021)

    By Kevin E. Noonan — The Leahy-Smith America Invents Act prescribed two very different post-grant review proceedings in U.S. patent law. The first, post-grant review (PGR), had some analogies with European opposition practice, in that petitions for PGR could be filed no later than nine months after the patent had granted and any ground of […]

  • CardioNet, LLC v. InfoBionic, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — The Federal Circuit continued its stringent (if misguided) application of the scope of subject matter eligibility by invalidating claims asserted in CardioNet, LLC v. InfoBionic, Inc. The case arose over InfoBionic’s alleged infringement of CardioNet’s U.S. Patent No. 7,099,715; claims 1, 11, and 20 are illustrative: 1. A machine-implemented method […]

  • Qiagen North America Holdings Inc. v. Handylab, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be anticipated or obvious (albeit this outcome has been less frequent for technologies in […]

  • Celgene Corp. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — The question of the proper court for a branded pharmaceutical maker to bring suit against an Abbreviated New Drug Application filer under the Hatch-Waxman Act is surprisingly unsettled seeing as the Act was enacted in 1984. The Federal Circuit brought some measure of clarity to the question recently when it […]

  • Celgene Corp. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — The question of the proper court for a branded pharmaceutical maker to bring suit against an Abbreviated New Drug Application filer under the Hatch-Waxman Act is surprisingly unsettled seeing as the Act was enacted in 1984. The Federal Circuit brought some measure of clarity to the question recently when it […]

  • Snyders Heart Valve LLC v. St. Jude Medical, LLC (Fed. Cir. 2021)

    By Kevin E. Noonan — The Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), at the end of its last term resulted in many cases with pending certiorari petitions that were based on Appointment Clause challenges to be remanded to the Federal Circuit, and many (if not most) of […]

  • Jennewein Biotechnologie GmbH v. International Trade Commission (Fed. Cir. 2021)

    By Kevin E. Noonan — The International Trade Commission can more readily provide injunctive relief against an adjudged infringer than a district court, under appropriate conditions (i.e., with regard to an infringing product or a product made by infringing a claimed method). In September, the Federal Circuit affirmed an exclusion order by the Commission in […]

  • CosmoKey Solutions GmbH v. Duo Security LLC (Fed. Cir. 2021)

    By Michael Borella — CosmoKey asserted U.S. Patent No. 9,246,903 against Duo in the U.S. District Court for the District of Delaware, alleging infringement. The District Court found the patent’s claims to be ineligible under 35 U.S.C. § 101 because they were directed to an abstract idea and lacked an inventive concept. On review, the […]

  • Belcher Pharmaceuticals, LLC v. Hospira, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — Imposition of liability under the equitable doctrine of inequitable conduct (as it has been variously defined) can result in a patent being held unenforceable; for this reason, former Chief Judge Rader called it the “atomic bomb of patent law” (see Aventis Pharma S.A. v. Amphastar Pharms., Inc., 525 F.3d 1334, […]

  • C.R. Bard, Inc. v. Medline Industries, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — In a nonprecedential decision, the Federal Circuit gave a mixture of success and failure to the parties in four separate inter partes review decisions by the Patent Trial and Appeal Board, in C.R. Bard, Inc. v. Medline Industries, Inc. The case arose in IPRs instituted in response to a challenge […]

  • The Federal Circuit Addresses Commercial Success

    By Michael Borella — In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and reiterated in KSR Int’l Co. v. Teleflex, Inc., include commercial success, long felt but unsolved needs, unexpected […]

  • Juno Therapeutics, Inc. v. Kite Pharma, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — Dominating the entering gallery of the Impressionists exhibit at the Art Institute of Chicago is Georges Seurat’s A Sunday on La Grande Jatte (see below). Painted in the pointillist style, the work comprises millions of individual paint dots reminiscent of photos taken with late 20th Century technology made up of […]

  • MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2021)

    By Michael Borella — Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101. Patent holder MyMail was able to convince two out of three judges on the Federal Circuit panel that […]

  • Teva Pharmaceuticals Int’l GmbH v. Eli Lilly & Co., Eli Lilly & Co. v. Teva Pharmaceuticals Int’l GmbH, and Teva Pharmaceuticals Int’l GmbH v. Eli Lilly & Co. (Fed. Cir. 2021)

    By Kevin E. Noonan — The Federal Circuit issued three decisions on Monday relating to Eli Lilly & Co’s. challenge in separate inter partes review proceedings on obviousness grounds of nine patents licensed by Teva Pharmaceuticals Int’l, with disparate results. The patents were related to humanized monoclonal antibodies immunologically specific for calcitonin gene-related peptide (CGRP), […]

  • GlaxoSmithKline LLC v. Teva Pharmaceuticals USA (Fed. Cir. 2021)

    By Kevin E. Noonan — Most judicial outcomes, particularly on appeal, are broadly based on varying combinations of process and outcome. The law is replete with process-based decisions (standing, jurisdiction, waiver, to name a few) and of course even more frequently perhaps coming to the “correct” outcome is a major decisive factor in a court’s […]

  • Chemours Company FC, LLC v. Darkin Industries, Ltd. (Fed. Cir. 2021)

    By Kevin E. Noonan — The Federal Circuit, and the Court of Customs and Patent Appeals before it, generally reviewed decisions by the Patent and Trademark Office under the same standard applied to district court decisions, whether the factual basis for the decision was “clearly erroneous” (questions of law were, and are, decided de novo), […]

  • Sensormatic Electronics, LLC v. Wyze Labs, Inc. (Fed. Cir. 2021)

    By Michael Borella — Sensormatic asserted U.S. Patents 7,730,534, 7,936,370, 7,954,129, 8,208,019, and 8,610,772 against Wyze in the District of Delaware, alleging infringement. Wyze moved the District Court to dismiss under Rule 12(c), on the grounds that the claims are directed to ineligible subject matter. The motion was granted. Sensormatic appealed. In Alice v. CLS […]

  • Yu v. Apple (Fed. Cir. 2021)

    By Michael Borella — When the Supreme Court began poking around into the law of patent eligibility just over a decade ago, the invention topics that it considered under the abstract idea exception were limited to types of financial transactions. The invention of Bilski v. Kappos was directed to hedging and that of Alice v. […]

  • Becton, Dickinson & Co. v. Baxter Corp. Englewood (Fed. Cir. 2021)

    By Kevin E. Noonan — In Becton, Dickinson & Co. v. Baxter Corp. Englewood, the Federal Circuit overturned a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review that claims in the challenged patent were not invalid for obviousness. The patent at issue, U.S. Patent No. 8,554,579, is directed to […]

  • Bio-Rad Laboratories, Inc. v. International Trade Comm. (Fed. Cir. 2021)

    By Kevin E. Noonan — Last week, the Federal Circuit affirmed imposition of an exclusion order under 19 U.S.C. § 1337 (Section 337 of the Tariff Act of 1930) by the Federal Trade Commission against 10X Genomyx (an intervenor in this appeal) over importation of patented microfluidic chips, in Bio-Rad Laboratories, Inc. v. International Trade […]

  • New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — In one of the more daring (and somewhat risky) strategies by an appellant challenging an adverse decision in a covered-business method (CBM) review proceeding, New Vision Gaming asserted a purported conflict of interest by Administrative Patent Judges (APJs) in making institution decisions. According to the Appellant’s argument, the pay, bonus, […]

  • Bio-Rad Laboratories, Inc. v. Int’l. Trade Comm. (Fed. Cir. 2021)

    By Kevin E. Noonan — Last month, the Federal Circuit affirmed an exclusion order imposed by the International Trade Commission against Bio-Rad for importing infringing microfluidic systems and components used for gene sequencing or related analyses, in Bio-Rad Laboratories, Inc. v. Int’l. Trade Comm. The ITC’s decision followed a complaint by 10X Genomics, an intervenor […]

  • Raytheon Technologies Corp. v. General Electric Co. (Fed. Cir. 2021)

    By Michael Borella — The legal concept of obviousness is tricky. A claimed invention is found obvious if the prior art teaches or suggests all claim limitations and one of ordinary skill in the art would have been motivated to combine the relevant teachings of the references. The inherent subjectivity of such an analysis can […]

  • In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

    By Kevin E. Noonan — Exactly two weeks after affirming a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims to methods and related computing systems for genetic […]

  • Appellants Raise Due Process Issues in New Vision Gaming and Development v. SG Gaming

    By Kevin E. Noonan — Ever since institution of the post-grant review proceedings enacted under the Leahy-Smith America Invents Act were implemented by the U.S. Patent and Trademark Office (through the newly constituted Patent Trial and Appeal Board), parties (particularly patentees who lost patent rights thereby) have challenged the outcome on procedural, substantive, and constitutional […]

  • In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

    By Kevin E. Noonan — The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims to methods and related computing systems for genetic haplotyping […]

  • In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

    By Kevin E. Noonan — The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims to methods and related computing systems for genetic haplotyping […]

  • Bayer Healthcare LLC v. Baxalta Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — Last week, the Federal Circuit affirmed a jury verdict against Baxalta Inc., Baxalta US Inc., and Nektar Therapeutics for infringing Bayer Healthcare’s patent to human blood clotting factor conjugates in Bayer Healthcare LLC v. Baxalta Inc. Bayer Healthcare sued Defendants on U.S. Patent No. 9,364,520, alleging willful infringement by Baxalta’s […]

  • Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Fed. Cir. 2021)

    By Michael Borella — Infinity Computer Products (“Infinity”) sued Oki Data in the District of Delaware for infringement of four patents. The District Court found the patents invalid due to indefiniteness and the Federal Circuit affirmed. This case serves to illustrate two important points in patent law: (i) taking contradictory positions during prosecution will be […]

  • Amgen Inc. v. Sanofi (Fed. Cir. 2021)

    By Kevin E. Noonan — A little less than four years ago, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to […]

  • Takeda Pharmaceutical Co. v. Torrent Pharmaceuticals Ltd. (Fed. Cir. 2021)

    By Kevin E. Noonan — In a terse, non-precedential opinion, the Federal Circuit affirmed a district court’s judgment that Defendants Torrent Pharmaceuticals and Indoco Remedies Ltd. had failed to prove that the claims asserted by Plaintiff/patentee Takeda were obvious, either under the statute or the judicially created doctrine of obviousness-type double patenting, in Takeda Pharmaceutical […]

  • Trustees of Columbia University v. Illumina, Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — While much has been written about the effect of the post-grant review provisions of the Leahy-Smith America Invents Act (2012) in invalidating U.S. patents, the change in the law most responsible for how easy it has become to invalidate patents is arguably the Supreme Court’s decision in Dickinson v. Zurko […]

  • In re Fulton (Fed. Cir. 2020)

    By Donald Zuhn –- Last month, the Federal Circuit affirmed the final determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board affirming the Examiner’s rejection of certain claims in U.S. Patent Application No. 12/789,280 as obvious. The rejected claims of the ‘280 application are directed to methods of making a low-carbohydrate […]

  • Top Four Stories of 2020

    By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories. For 2020, we identified eight stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and […]

  • Top Stories of 2020: #5 to #8

    By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories. For 2020, we identified eight stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and […]

  • Horizon Pharma, Inc. v. Dr. Reddy’s Laboratories Inc. (Fed. Cir. 2021)

    By Kevin E. Noonan — Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention” (emphasis […]

  • Simio, LLC v. FlexSim Software Products, Inc. (Fed. Cir. 2020)

    By Michael Borella — This decision is bad. Not an American Axle level of bad, but still quite far from good. Simio sued FlexSim in the District of Utah for alleged infringement of its U.S. Patent No. 8,156,468. FlexSim moved for dismissal on the pleadings under 35 U.S.C. § 101, on the grounds that the […]

  • Eli Lilly & Co. v. Apotex, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — After more than two decades of being the red-headed stepchild of patent infringement before the Federal Circuit, infringement under the doctrine of equivalents has made a dramatic comeback in the past few years, the Court affirming plaintiffs asserting their patents under the doctrine six times (versus denying DOE infringement on […]

  • Adaptive Streaming Inc. v. Netflix, Inc. (Fed. Cir. 2020)

    By Michael Borella — Adaptive Streaming, the owner of U.S. Patent No. 7,047,305, sued Netflix in the Central District of California for alleged infringement. Netflix moved to dismiss the case on the pleadings under Rule 12(b)(6), asserting that the claims did not meet the subject matter eligibility requirements of 35 U.S.C. § 101. The District […]

  • Bracco Diagnostics Inc. v. Maia Pharmaceuticals, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — Stipulating to infringement after a contrary claim construction is a conventional stratagem for a losing party to have a final judgment that can be challenged before the Federal Circuit. The risk of course, is that if the Court finds the district court’s construction to be correct, the stipulation precludes appellate […]

  • Vectura Ltd. v. GlaxoSmithKline LLC (Fed. Cir. 2020)

    By Kevin E. Noonan — Trial courts tend to get more than the benefit of the doubt when their decisions are viewed under the “abuse of discretion” standard, and juries similarly are affirmed unless there isn’t substantial evidence supporting their verdicts. Both these rubrics, which extend more generally to cases involving disputes outside patent law, […]

  • Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)

    By Michael Borella — One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer implementation. But that is not always the case. Under current interpretations of the eligibility standard, not only does the language of the actual […]

  • Chevron U.S.A. Inc. v. University of Wyoming Research Corp. (Fed. Cir. 2020)

    By Kevin E. Noonan — Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change to a “first-inventor-to-file” system. The Federal Circuit recently upheld the Patent Trial and Appeal Board’s priority determination in […]

  • Par Pharmaceutical, Inc. v. Hospira, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — It has long been understood that claim construction can, and frequently is, dispositive in patent litigation. This truism was the basis for the Federal Circuit affirming the District Court’s decision against a generic drug producer in its recent decision in Par Pharmaceutical, Inc. v. Hospira, Inc. And the case being […]

  • Ferring B.V. v. Allergan, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — The Federal Circuit has taken the occasion, in appeals from the Patent Trial and Appeal Board as well as district courts, to remand judgments whenever the Court believes that the record below is devoid of sufficient detail to properly assess the correctness of the decisions made below (see “Merck Sharp […]

  • In re Nitro Fluids L.L.C. (Fed. Cir. 2020)

    By Kevin E. Noonan — Venue in patent cases has been a topic of recent Supreme Court (TC Heartland LLC v. Kraft Foods Group Brands LLC) and Federal Circuit (In re Cray) consideration. Last month, the Federal Circuit again considered venue with regard to a motion to transfer and defendant’s writ of mandamus challenging the […]

  • C R Bard Inc. v. AngioDynamics, Inc. (Fed. Cir. 2020)

    By Michael Borella — One of the more intellectually dishonest aspects of current patent eligibility law is that it allows one to ignore certain claim elements when evaluating claims under 35 U.S.C. § 101. In Mayo v. Prometheus, it was stated that once one has identified a judicial exception to patentability (e.g., a law of […]

  • Realtime Data LLC v. Reduxio Systems, Inc. (Fed. Cir. 2020)

    By Michael Borella — One of the more frustrating aspects of current patent-eligibility law is that it lends itself all too easily to mischief. In particular, given that the eligibility test under 35 U.S.C. § 101 as interpreted by the courts is poorly-defined, conclusory reasoning frequently rears its ugly head. Such reasoning is sometimes found […]

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (Fed. Cir. 2020)

    Federal Circuit Refuses to Issue Stay in Mandate Pending Certiorari Decision By Kevin E. Noonan — One of the most interesting (albeit troubling) decisions by the Federal Circuit in the past year or so was its decisions, by a panel and then in denying review en banc, in American Axle & Manufacturing, Inc. v. Neapco […]

  • St. Jude Medical, LLC v. Snyders Heart Valve LLC (Fed. Cir. 2020)

    By Kevin E. Noonan — At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court’s docket, particularly Board decisions in inter partes review. There being little evidence that […]

  • GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2020)

    What Quantum of Culpable Conduct Is Required for an ANDA Applicant to Induce Infringement? By Kevin E. Noonan — The back-and-forth, (almost) cat-and-mouse-like competition between branded innovator and generic drug makers sanctioned under the Hatch-Waxman Act has been on-going for over thirty years. As part of this regime, Congress has provided a pathway for generic […]

  • Biogen MA, Inc. v. EMD Serono, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — Novelty is perhaps the principal, most fundamental requirement for patentability, and depriving the public of anything in the prior art must be avoided. The Federal Circuit recently reinforced the primacy of these rubrics in Biogen MA, Inc. v. EMD Serono, Inc. The issues arose in litigation over Biogen’s Rebif* product […]

  • Tormasi v. Western Digital Corp. (Fed. Cir. 2020)

    By Donald Zuhn — Last month, the Federal Circuit affirmed an Order by the U.S. District Court for the Northern District of California, finding that Appellant Walter A. Tormasi lacked the capacity to sue under Federal Rule of Civil Procedure 17(b). Mr. Tormasi had filed suit against Appellee Western Digital Corp., asserting that Western Digital […]

  • Is It Time for Federal Circuit to Rethink Its Subject Matter Eligibility Jurisprudence? 

    By Kevin E. Noonan — The Federal Circuit’s inchoate attempts to fashion a consistent, rational application of the Supreme Court’s recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent in that precedent, raises questions regarding the value of having a “specialized” Circuit Court for the purpose of harmonizing U.S. patent […]

  • Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — ANDA litigation, pursuant to the Hatch-Waxman Act, has become more complicated over the years since enactment of the statute in 1984, with more patents being asserted and more parties participating over the opportunity to market a generic version of a branded, innovator drug. Particularly under circumstances where there are several […]

  • B/E Aerospace, Inc. v. C&D Zodiac, Inc. (Fed. Cir. 2020)

    Common Sense Prevails By Joseph Herndon — B/E Aerospace, Inc. appealed a final written decision of the Patent Trial and Appeal Board (PTAB) that found certain claims of B/E’s aircraft lavatory-related patents obvious. B/E contended that the Board’s decision is erroneous because the Board incorporated a claim limitation that is not present in the prior […]

  • IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2020)

    By Kevin E. Noonan — The Federal Circuit has spent the past few years applying the Supreme Court’s most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The Federal Circuit’s latest decision, in IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc., affirmed […]

  • American Axle & Mfg. v. Neapco Holdings LLC (Fed. Cir. 2019)

    Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing By Kevin E. Noonan — Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in response to a petition for rehearing and rehearing en banc (see “IIllumina, Inc. v. Ariosa Diagnostics, Inc. […]

  • Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

    Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc. By Kevin E. Noonan — Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for detecting fetal DNA in maternal blood to satisfy the subject matter eligibility requirements of Section 101 (see “Illumina, Inc. […]

  • XY, LLC v. Trans Ova Genetics, LC (Fed. Cir. 2020)

    By Kevin E. Noonan — Last week, the Federal Circuit took the opportunity presented in an appeal from judgment on the pleadings in XY, LLC v. Trans Ova Genetics, LC to distinguish claims directed toward a patent-eligible invention from invalidation under the Supreme Court’s imperfectly applied Alice Corp. v. CLS Bank Int’l (2014) test. The […]

  • Gensetix, Inc. v. Board of Regents of the University of Texas System (Fed. Cir. 2020)

    By Kevin E. Noonan — In a conundrum worthy of a law school civil procedure examination, plaintiff Gensetix found itself apparently with no remedy for infringement by Baylor College of Medicine, Diakonos Research Ltd., and William Decker of patents licensed from the University of Texas (UT), when UT refused to join as a necessary party […]

  • Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

    By James L. Lovsin — Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality as well as the Board’s authority. Judge O’Malley filed a dissenting opinion—nearly […]

  • Packet Intelligence LLC v. NetScout Systems, Inc. (Fed. Cir. 2020)

    By Michael Borella — Introduction Packet Intelligence sued NetScout in the Eastern District of Texas, alleging infringement of U.S. Patent Nos. 6,665,725, 6,839,751, and 6,954,789. The District Court ruled that all three patents were valid under 35 U.S.C. §§ 101 and 102, and infringed. The § 101 dispute was tried at the bench. NetScout appealed. […]

  • Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC (Fed. Cir. 2020)

    By Michael Borella — Electronic Communication Technologies (ECT) sued ShoppersChoice in the Southern District of Florida for allegedly infringing claim 11 of U.S. Patent No. 9,373,261. The claim recites: 11. An automated notification system, comprising: one or more transceivers designed to communicate data; one or more memories; one or more processors; and computer program code […]

  • In re Boloro Global Ltd. (Fed. Cir. 2020)

    Federal Circuit Extends Arthrex to Patent Prosecution By James Lovsin and Alexa Giralamo* — This week, the Federal Circuit extended its holding in Arthrex, Inc. v. Smith & Nephew, Inc., that administrative patent judges (“APJs”) were improperly appointed in violation of the Appointments Clause, to ex parte proceedings in In re Boloro Global Limited. Under […]

  • In re Zunshine (Fed. Cir. 2020)

    By Donald Zuhn –- Earlier today, the Federal Circuit affirmed the rejection by the Patent Trial and Appeal Board of claims 1-3 of U.S. Patent Application No. 15/726,162 as being patent ineligible under 35 U.S.C. § 101. The ‘162 application, which is entitled “An Iterative Process of Squeezing Excess Food out of Daily Food Intake […]