No matter how groundbreaking, innovative, or brilliant the advance, innovators in mathematical techniques, particularly in the finance field, may think twice about seeking patent protection in view of the Federal Circuit’s recent precedential Section 101 decision in SAP America, Inc. v. Investpic, LLC, No. 2017-2081 (Fed. Cir. May 15, 2018).
There, claim 1…
On Wednesday, May 9, 2018, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register[1], announcing its plans to change the claim construction standard used in America Invents Act (“AIA”) reviews to the standard applied in the federal district courts and International Trade Commission (“ITC”) proceedings. Under…
Yesterday, the U.S. Supreme Court issued two important decisions relating to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO).
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, U.S., No. 16-712, 4/24/2018
In Oil States, the Supreme Court ruled…
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity…
Since the Federal Circuit’s October 5, 2017 decision in Amgen Inc. v. Sanofi[1] overruling the so-called “newly characterized antigen” test for written description under 35 U.S.C. 112, patent challengers in the pharmaceutical and biotechnology fields have gained powerful tools for attacking antibody claims for lack of adequate written description. More broadly, patent challengers are…
Making up only around 7% of post-grant trials at the PTAB (according to statistics released by the USPTO from February 2018), the number of petitions for Covered Business Method (“CBM”) reviews has experienced a decline every year since its peak in 2014. With 34 filings in 2017,[1] the 16 filed so far this year…
On Thursday, March 15, 2018, Commissioner for Patents, Andrew Hirshfeld, announced that the USPTO is making progress on its “Access to Prior Art Project,” which will serve as an automated tool to identify relevant prior art early in the review process.[1] The goal of the project is to increase patent examination quality and efficiency…
In Titanium Metals Corp. v. Banner[1], the Federal Circuit notably held that it is “an elementary principle of patent law” that when a claim recites a numerical range, the claimed range is anticipated by a prior art reference that discloses a point or an example within that range. Accordingly, when seeking to anticipate…
The Patent Trial and Appeal Board (“the PTAB”) ruled last Friday, February 23, 2018, that tribal sovereign immunity does not apply to the Saint Regis Mohawk Tribe. The issue has been percolating for months. For more background on the issue, see these previous blog articles – Tribal Sovereign Immunity: The New Defense Against IPRs? and…
On Monday, February 12, 2018, the Federal Circuit reversed the Patent Trial and Appeal Board’s (“the Board”) anticipation rejections and vacated and remanded the obviousness rejections against U.S. Patent Application No. 12/906,222 (“the ’222 application”), an application directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and…
