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Daniel Yannuzzi

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Daniel Yannuzzi is a partner and Practice Group Leader of the Intellectual Property Practice Group.

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In a significant decision, the Federal Circuit reversed the U.S. International Trade Commission’s (ITC) finding that claims of U.S. Patent No. 10,508,502 (502 Patent) were invalid under 35 U.S.C. § 101. The opinion addresses critical issues in patent eligibility jurisprudence, particularly regarding composition-of-matter claims and provides additional clarity for patent owners facing § 101 challenges.Continue Reading Federal Circuit Clarifies § 101 Patent Eligibility for Composition-of-Matter Claims

The U.S. Supreme Court has once again been urged to revisit 35 U.S.C. § 101, the statute governing patent eligibility. Audio Evolution Diagnostics, Inc. (AED) filed a petition for writ of certiorari, challenging the Federal Circuit’s summary affirmance under Rule 36 of a ruling that invalidated its patents under the Alice/Mayo framework. Should the SCOTUS take up the case, this presents an opportunity for the Court to clarify the boundaries of patent eligibility and address concerns over the Federal Circuit’s handling of such cases.Continue Reading Patent Eligibility: The Call for Supreme Court Clarity and for an End to Summary Affirmances

In a per curium order issued under seal May 3, 2023 but recently made public, the Patent Trial and Appeal Board awarded sanctions against Patent Owner, Longhorn Vaccines & Diagnostics, canceling all challenged claims of its five asserted patents for its “egregious abuse of the PTAB process.” Particularly, the Board determined that Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the Board by “selectively and improperly” withholding information material to the patentability of the claims challenged in the IPR proceeding.Continue Reading “Egregious Abuse” of the PTAB Process Leads to Adverse Decision Sanctions in IPR Proceeding

On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. et al. v. Sanofi, et al., No. 21-757. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly infringing two of its patents in 2014, the Supreme Court held that Amgen’s asserted patents failed to satisfy the enablement requirement under 35 U.S.C. § 112(a), and are thus invalid.Continue Reading SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. Booking.com). In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” terms.
Continue Reading USPTO Issues Guidance on Examination of Generic.com Terms

The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments Clause of the Constitution; and whether, if APJs are determined to be principal officers, severing the application of 5 U.S.C. 7513(a) to those judges cures any violation of the Appointments Clause.  The Court declined to hear a third question of whether the Court of Appeals in the Arthrex[1] case erred by adjudicating the Appointments Clause question despite the failure of Arthrex to present its Appointments Clause challenge during the PTAB proceedings.
Continue Reading Supreme Court to Decide Constitutionality of PTAB Judge Appointments

The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board).
Continue Reading USPTO Announces New Pilot Program to Expedite Appeals Process

On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee.[4] The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in some situations. The initiative also applies to the corresponding six-month deadline to claim priority of a foreign filed design patent application.[5]
Continue Reading USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit

The United States Patent and Trademark Office (USPTO) today announced a new Prioritized Examination Pilot Program for qualified patent applications relating to COVID-19.  This program is available without the usual prioritized-examination fees and the USPTO’s goal under the program is to reach final disposition of applications in the program within twelve months from the date prioritized status is granted.  However, the USPTO notes that it may be able to reach final disposition in six months if applicants provide more timely responses to notices and actions from the USPTO.  This pilot program is limited to a total of 500 accepted requests, but the USPTO may extend or terminate the pilot program at its discretion.
Continue Reading COVID-19 Prioritized Examination Pilot Program Now Available for Small and Micro Entities

On March 31, 2020, the USPTO announced that it is permitting applicants, for delays that are based on the ongoing COVID-19 emergency in the United States, to request a 30-day extension of the time allowed to file certain documents and to pay certain fees. We provided an explanation of this announcement when it was published. Since then, the USPTO provided a form to be used for the “statement of delay” required in claiming a COVID-19-related filing extension. Extensions were originally applicable to due dates falling between March 27 and April 30. The USPTO, on April 28, 2020, extended the applicable period for due dates to June 1, 2020.
Continue Reading USPTO Provides Form for Claiming 30-Day COVID-19 Extensions