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Supreme Court: De Novo Review Proper For New Evidence in Patent Cases

WASHINGTON, D.C. - (Mealey's) The U.S. Supreme Court today rejected a call by the U.S. Patent and Trademark Office (PTO) for stricter evidentiary rules and an elevated standard of review in challenges to adverse patentability rulings ( David J. Kappos v. Gilbert P. Hyatt , No. 10-1219, U.S. Sup...

Fitch, Even, Tabin & Flannery LLP: Supreme Court Requires De Novo Review in Civil Actions to Obtain Patent

By Allen E. Hoover Today [April 18, 2012], in Kappos v. Hyatt , the U.S. Supreme Court affirmed the Court of Appeals for the Federal Circuit, holding that courts must consider de novo any evidence presented by the appellant in a civil action under 35 U.S.C. § 145 . Under 35 U.S.C. §145...

Pinpointing Invention Conception Date in a Patent Interference

n Dawson v. Dawson [ an enhanced version of this opinion is available to lexis.com subscribers ], the Federal Circuit considered an unusual case with a question that often arises in interferences: when did the inventor invent the subject matter at issue. While the decision does not break new ground...

Supreme Court Hears Oral Arguments in Gene Patent Dispute

WASHINGTON, D.C. - (Mealey's) The U.S. Supreme Court on April 15 appeared skeptical of claims that native DNA is patentable during oral arguments in a case closely watched by the medical community and biotech industry ( The Association for Molecular Pathology, et al. v. Myriad Genetics Inc. ,...

Supreme Court Hears Oral Arguments on Whether Human Genes are Patentable IP Topics

by Deborah A. Somerville and Joseph A. Coppola, Ph.D. On April 15, the U.S. Supreme Court heard oral arguments in Association for Molecular Pathology, et al. v. Myriad Genetics Inc., et al. , a case that addresses the question "Are human genes patentable?" At stake are a group of patents...

Supreme Court Partly Reverses, Says Isolated DNA Not Patentable

WASHINGTON, D.C. - (Mealey's) In a unanimous ruling June 13, the U.S. Supreme Court found that although complementary DNA, or "cDNA," is patent-eligible, isolated DNA is not ( The Association for Molecular Pathology et al. v. Myriad Genetics Inc. , No. 12-398, U.S. Sup.; See 5/6/13...

Myriad Genetics: The Supreme Court Rules That Isolated DNA Is Not Patent Eligible

by Amy DeCloux Ph.D. and Kathleen M. Williams Ph.D. The court's long-anticipated decision in Association of Molecular Pathology. v. Myriad Genetics Inc unanimously supported the premise that a gene in its isolated form cannot be the subject of a U.S. patent. Excerpt: "The very first...

Kenyon & Kenyon: Consumer Watchdog v. WARF Stem Cell Case Could Test Myriad’s Reach

by Maria Luisa Palmese and Deborah A. Somerville On July 2, 2013, Consumer Watchdog (formerly The Foundation for Taxpayer and Consumer Rights) asked the Court of Appeals for the Federal Circuit to apply the product of nature analysis from Association for Molecular Pathology, et. al. v. Myriad Genetics...

Software is Still Patentable Subject Matter: An Analysis of the En Banc Federal Circuit Opinion in CLS Bank v. Alice Corp

by Dov Greenbaum With the Supreme Court then poised to rule in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __(2013) regarding the subject matter eligibility of isolated genes, the en banc Federal Circuit in CLS Bank v. Alice Corp. (Fed. Cir. 2013) failed to provide a clear...

Top 5 Reasons for Non-Compliant IPR Petitions

The First Year of PTAB Patentability Challenges Today marks the one year anniversary of the new patent challenge mechanisms of the America Invents Act (AIA). Over the past few months there have been many noteworthy rulings in the 550+ Inter Partes Review (IPR) proceedings and 50+ Covered Business...

PTAB Redundant Grounds of Unpatentability To Come Back From the Dead?

Simplification of PTAB Trial Grounds May Not Help CAFC Under the old inter partes patent reexamination model, patentees were often faced with 10+ grounds of rejection. The numerosity and overlap in these rejections rendered USPTO processing quite tedious and resource intensive. For at least this reason...

Duane Morris: Do Pharmaceutical Compositions Have Patent Subject Matter Eligibility Under the New USPTO Guidelines?

The USPTO’s new patent subject matter eligibility guidelines (the “Guidelines”) include examples that apply the multi-factored analysis mandated by the Guidelines to compositions that include one or more “natural products” as a component. Do these examples indicate that...

Supreme Court: Patent Eligibility Not Conferred by Computer Implementation

WASHINGTON, D.C. — (Mealey’s) The U.S. Supreme Court unanimously held today that a patent that claims a computer-implemented method of providing intermediated settlement services for financial obligations is directed to a patent-ineligible concept under Section 101 of the Patent Act ( Alice...

Pharmaceutical Claims Found Unpatentable

by Michael K. Levy On June 20, 2014, the Patent Trial and Appeal Board (PTAB) issued the first inter partes review (IPR) decisions reaching pharmaceutically-related subject matter, which in this case constituted dietary supplement and vitamin products. Four separate final written decisions, addressing...

Fitch Even IP Alert: Narrow Species Claim Is Invalid for Double Patenting Over Prior Broader Genus Claim

The judicially created doctrine of obviousness-type double patenting is intended to prevent a patentee from obtaining multiple separate patents for inventions that are not patentably distinct. On August 21, the Court of Appeals for the Federal Circuit decided the case of AbbVie Inc. v. The Mathilda and...

Anticipating Non-Analogous Art Arguments at the PTAB

Setting the Level of Skill May be Critical in Niche Arts The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation...

Statutory Estoppel For IPR Petition Misses?

Unsuccessful IPR Petitioner Urges Expansive PTAB Estoppel In a strange twist, an unsuccessful IPR petitioner is currently urging the CAFC to adopt an expansive interpretation of statutory estoppel for Inter Partes Review (IPR). That is, the petitioner argues where only a subset of claims challenged...

PTAB Designates Informative Decisions on Privity & Estoppel

PTAB Announces New Informative Decisions The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC , IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants...

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On appeal from the United States Patent and Trademark...

Kyle Bass Finally Gets an IPR Instituted

PTAB Finds IPR Filing of Hedge Fund Has Merit Yesterday, in IPR2015-00988, the Patent Trial & Appeal Board (PTAB) instituted review of Cosmo Technologies patent 7,773,720. The patent is directed to controlled release oral pharmaceutical compositions containing 5-amino salicylic acid, also known...

Supremes’ Alice Ruling Drowns Water Treatment Patent

A Green Patent Complaint Update post reported on the patent infringement suit between Neochloris and Emerson Process Management Power & Water Solutions. Citgo was also named as a defendant. In the lawsuit, Neochloris accused Emerson and Citgo of infringing U.S. Patent No. 6,845,336 (‘336...