This decision[1] emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B).Continue Reading The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”
In SnapRays, d/b/a SnapPower v. Lighting Defense Group, the Federal Circuit found that a district court could exercise personal jurisdiction over a declaratory judgment defendant based on the defendant’s sending an Amazon Patent Evaluation Express (APEX) agreement to the declaratory judgment plaintiff alleging that the plaintiff infringed the defendant’s patents by selling products through Amazon into the state.Continue Reading Federal Circuit Finds Personal Jurisdiction in an Amazon Product Dispute
In Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc. 2023-1952 (Fed. Cir. April 11, 2024), this case involves appellate review of a district court’s findings regarding patent obviousness and infringement in Hatch-Waxman litigation. Specifically, the Federal Circuit reviewed the lower court’s obviousness analysis for dosage regimen and polymorph patent claims, as well as its interpretation of ANDA approval resetting provisions.Continue Reading Federal Circuit Upholds Rifaximin Patent Rulings, Affirms ANDA Approval Restrictions
In Rembrandt Diagnostics, LP v. Alere, Inc. 2021-1796 (Fed. Cir. Aug. 11, 2023), the decision addresses the Patent Trial and Appeal Board’s obviousness determinations in an Inter Partes Review proceeding (IPR2016-01502), where the Board held the claims in the challenged patents unpatentable as obvious in view of the asserted prior art.Continue Reading Breaking down the Federal Circuits Reasoning in the Rembrandt vs Alere Patent Dispute
This case[1] addresses the original patent requirement under 35 U.S.C. § 251 that reissue claims must be directed to the invention disclosed in the original patent.Continue Reading Grilling Up Burgers and Dogs – With a Side of Original Patent Requirement
This case addresses the “skilled and diligent searcher” standard used for establishing Inter Partes Review (“IPR”) estoppel (or lack thereof). In particular, this case establishes: (1) which party bears the burden of proof regarding whether a “skilled and diligent searcher” could have reasonably been expected to discover prior art such that failure to include it in an IPR petition estops the petitioner from raising it in other civil actions under 35 U.S.C. § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover.Continue Reading Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)
The Situation
Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains. As a result, the Examiners may find claims directed to merely applying the blockchain technology to execute legal or commercial contracts, for example, as part of a commerce system, like hedging. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2356 (citing Bilski v. Kappas, 561, U.S. 593, 611 (2010)).Continue Reading Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny
On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States. In doing so, USPTO director Andrei Iancu is exercising temporary authority granted to him under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27.
Continue Reading USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19
On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law. The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory. Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws. While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis.
Continue Reading Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic
This article was originally published on PatentlyO.com.
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35 U.S.C. § 102. In finding that the AIA “did not change the statutory meaning of ‘on sale’ in the circumstances involved here,” the Federal Circuit provided insight into the continued relevance of the forfeiture doctrine of Metallizing Engineering v. Kenyon Bearing.
Continue Reading Metallizing Forfeiture Post-Helsinn
Yesterday, in TC Heartland LLC v. Kraft Foods Group Brands, No. 16-341, the United States Supreme Court significantly changed the geography where future patent infringement suits can be filed. The patent venue statute, 28 U.S.C § 1400(b), provides that a patent-infringement lawsuit may be brought either (1) in a State where the defendant resides or (2) where the defendant has committed acts of infringement and has a regular and established place of business. In TC Heartland, the Supreme Court concluded that the “residence requirement” of the patent venue statute refers only to the State of incorporation of domestic corporations. By interpreting “resides” as “is incorporated,” the Supreme Court has significantly restricted where patent owners can file infringement lawsuits.
Continue Reading Supreme Court Unanimously Changes Where Patents May Be Litigated