PTAB Applies Director’s Guidance and Holds That Compelling Evidence of Unpatentability Precludes Fintiv Denial by Megan R. Mahoney, Jason Weil & Rubén H. Muñoz September 13, 202 Patent Trial and Appeal Board, Inter Partes Review, Expert Testimony In an IPR institution decision issued shortly after the USPTO issued interim guidance... read more →

USPTO Director Issues Sua Sponte Precedential Decision Addressing Abuse of IPR Process by Caitlin E. Olwell, Rubén H. Muñoz, Lisa Hladik (Law Clerk) November 10, 2022 Patent Trial and Appeal Board, Inter Partes Review, Infringement In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues... read more →

by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a patent law blog – Patentlyo.com * Replying All to Email Messages – On November 7, 2022, David Hricik discussed the... read more →

Inventors, Not Ai-Ventors: The Patent Act Requires an “Inventor” to be a Natural Person In Thaler v. Vidal, Appeal No. 21-2347, the Federal Circuit held that under the Patent Act , an “inventor” must be a natural person. Therefore, an AI system cannot be an inventor. Thaler filed two patent... read more →

University Successfully Argues Prior Art’s Disclosures Were Not “by Another” In Lsi Corporation v. Regents Of The University Of Minnesota, Appeal No. 21-2057, the Federal Circuit held that determining whether a patent or application’s disclosure is “by another” under § 102(e) requires evaluating the relied-upon portions of the disclosure to determine... read more →

An ANDA Specification that Directly Addresses Issues of Infringement Controls the Infringement Inquiry In Par Pharmaceutical, Inc. v. Eagle Pharmaceticals, Inc. Appeal No.  22-145, the Federal Circuit held that an ANDA was held not to infringe asserted claims because the ANDA specifies pH ranges that fall outside of those recited... read more →

Missing Experience Undermines Expert’s Rebuttal of Obviousness Arguments In Best Medical International, Inc. v. Elekta Inc., Appeal No. 21-2099, the Federal Circuit held that Expert testimony was properly discounted when substantial evidence supported the Board’s finding that a POSA would have possessed experience that the expert was missing;  there is... read more →

Expert Testimony That Contradicts Patent Specification Fails to Create a Genuine Issue of Fact In Caredx, Inc. v. Natera, Inc., Appeal No. 22-1027, the Federal Circuit held that expert testimony that steps of challenged patent claims were unconventional failed to preclude summary judgment of ineligibility where specification admitted the steps... read more →

Claims With Clerical Errors Can Be Judicially Corrected and Willfully Infringed Pavo Solutions LLC v. Kingston Technology Company, Inc., Appeal No. 21-1834, the Federal Circuit held that a court can correct obvious minor typographical or clerical errors in claim language even when doing so would alter the claimed structure; reliance... read more →

 Justice Must Satisfy the Appearance of Justice— A Judge’s Family’s Financial Interest of 100 Shares of a Party’s Stock is a Serious Issue Centripetal Networks, Inc. v. Cisco Systems, Inc., Appeal No. 21-1888, the Federal Circuit held that placing stock in a blind trust does not divest a judge of... read more →