On August 21, 2019, the Court of Appeals for the Federal Circuit held in The Chamberlain Group, Inc. v. Techtronic Inds. Co.,[1] that Chamberlain’s U.S. Patent No. 7,224,275 (‘275) directed to wireless communications technology for operating a movable barrier (i.e., garage door opener) was patent-ineligible subject matter under 35 U.S.C. §101. The ‘275 patent is …
Category: 103
35 U.S. Code § 103 – Conditions for patentability; non-obvious subject matter.
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
NIST Seeking Comments on CRISPR Lexicon
On September 18, 2019, the National Institute of Standards and Technology (NIST)’s Genome Editing Consortium (GEC) formally sought comments on genome editing, commonly called CRISPR, terminology in order to develop a standardized system of terms and definitions for the CRISPR research community. This is the first time the NIST has made overtures to develop a …
Fed Circuit Watch: Single Reference Obviousness Finding Does Not Require Motivation to Combine
Two cases decided recently by the Court of Appeals for the Federal Circuit discuss the oft-problematic area of 35 U.S.C. §103, or the nonobviousness requirement. This is the second case, Realtime Data, LLC v. Iancu,[1] decided January 10, 2019. Realtime Data, LLC, owns U.S. Patent No. 6,597,812 (‘812), directed to system and method of providing …
Fed Circuit Watch: No Error in Reconsideration of Non-Instituted Ground of Unpatentability
Two cases decided recently by the Court of Appeals for the Federal Circuit discuss the oft-problematic area of 35 U.S.C. §103, or the nonobviousness requirement. AC Technologies S.A. v. Amazon.com, Inc.,[1] decided on January 9, 2019, is the first case. AC Technologies S.A. owns U.S. Patent No. 7,904,680 (‘680), directed to data access management, in …
Fed Circuit Watch: Later-Filed, Earlier-Expiring Patent Not Appropriate as Obviousness-Type Double Patenting Reference
An interesting case which revolved around the interplay between differing patent terms, patent term extension under 35 U.S.C. §156, and obviousness-type double patenting was decided on December 7, 2018, in Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceuticals Inc.,[1] by the Court of Appeals for the Federal Circuit. Patent term has changed based on acts of Congress. …
Fed Circuit Watch: PTAB Messed Up Obviousness Analysis (Again)
The Patent Trial and Appeal Board (PTAB) seems to have bungled an obviousness analysis (again), and was dinged by the Court of Appeals for the Federal Circuit in E.I. DuPont de Nemours v. Synvina C.V.,[1] decided on September 17, 2018. The case is a good primer on the law of obviousness related to overlapping ranges. …
Fed Circuit Watch: Opioid Addiction Drug Patent Not Obvious
On September 10, 2018, the Court of Appeals for the Federal Circuit decided Orexo AB v. Actavis Elizabeth LLC,[1] in what turns out to be a fairly straightforward analysis of an obviousness case under 35 U.S.C. §103. The facts are as follows. Orexo owns U.S. Patent No. 8,940,330 (‘330), which describes opioid treatment generally, and …
Fed Circuit Watch: Broad Wins Latest CRISPR Court Battle
On September 10, 2018, the Court of Appeals for the Federal Circuit decided Regents of the Univ. of Calif. v. Broad Inst., Inc.,[1] in the latest court battle in the CRISPR patent challenge pitting three of the nation’s largest research universities against each other. CRISPR, or “Clustered Regularly Interspaced Short Palindromic Repeats,” is a family …
Fed Circuit Watch: PTAB Error to Not Consider Arguments in Reply Brief
On August 27, 2018, the Court of Appeals for the Federal Circuit handed down Ericsson Inc. v. Intellectual Ventures I LLC,[1] in which the rules played an important role in decisions made in the case. The facts are as follows. Intellectual Ventures I owns U.S. Patent No. 5,602,831 (‘831), entitled “Optimizing packet size to eliminate …
Fed Circuit Watch: Hyperlinked Material in Federal Register Notice is Prior Art
What constitutes prior art is not as easy as it may seem. While it may be uncontroverted that a Federal Register notice is prior art, the hyperlinked materials in that notice is what was at issue in Jazz Pharm., Inc. v. Amneal Pharm., Inc.,[1] decided by the Court of Appeals for the Federal Circuit on …