Tag Archives: Federal Circuit

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

Author: Jeffrey M. Jacobstein
Editor: Eric P. Raciti

Ever since the Federal Circuit held that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference in Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2011), Applicants and Patentees have found themselves facing many more double patenting rejections.  Even continuing applications filed in a single portfolio run the risk of receiving OTDP rejections if the claims of the subject and reference patents are not patentably distinct.  See AbbVie Inc. v. Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014).  The court in Kennedy explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the PTO.”  AbbVie, 764 F.3d at 1373.  So, patent term adjustment accumulated during examination could be in jeopardy when the subject claims overlap those in a continuation. Continue reading

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RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

Author: Elliot C. Cook
Editor: J. Derek McCorquindale

In the nearly three years since Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit has analyzed the issue of patent-eligibility in the context of numerous distinct technologies. The court’s precedent applying Alice addresses patents directed to financial services, Internet content filtering, database maintenance, payment-based content access, animated facial gesturing, physical object tracking, distributed data processing, and more. One takeaway is that no technological discipline is, per se, eligible or ineligible. Instead, the outcomes of these cases are better explained by the specific inventions at issue and how they are claimed. RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. Apr. 28, 2017), confirms this lesson. Continue reading

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Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Author: J. Derek McCorquindale
Editor: Eric P. Raciti

The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously reversed the invalidity determination of the Patent Trial and Appeal Board (“PTAB”). In the March 14, 2017, panel opinion by Circuit Judge Moore, alongside Circuit Judges Lourie and Taranto, the court rejected the PTAB’s anticipation analysis and corrected a misapplication of 35 U.S.C. § 102 used to invalidate a claim. Continue reading

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Apple v. Samsung: The Parties Weigh in on Next Steps

Apple v. Samsung: The Parties Weigh in on Next Steps

Author: Elizabeth D. Ferrill
Editor: J. Derek McCorquindale

On Tuesday, December 6, 2017, the United States Supreme Court issued its first opinion in a design patent case in more than 120 years.  In the long-running smartphone saga between Apple and Samsung, the issue before the Supreme Court was the proper interpretation of a 35 U.S.C. § 289.  Under this statute, when an infringer is found to have applied a patented design to any “article of manufacture,” that infringer is “liable to the [patent] owner to the extent of his total profit, but not less than $250[.]” Continue reading

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No Cause of Action for New Party to Reexamination

Author: Shawn S. Chang
Editor: Amanda K. Murphy Ph.D.

CAFC Decision: Agilent Technologies, Inc. v. Waters Technologies Corp., No. 15-1280 (Fed. Cir. January 29, 2016)

Background: During an inter partes reexamination requested by Aurora, Agilent acquired “substantially all” of Aurora’s assets and agreed to be bound by the outcome of the reexamination and the underlying patent infringement litigation.

Issue: Under 35 U.S.C. § 141, should Agilent be considered a third-party requester for purposes of appealing the final decision issued by the Patent Trial and Appeal Board in the inter partes reexamination?

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