USPTO Issues Two Exam Memos In Light of Vanda and Berkheimer

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Two recent examination guidance memoranda issued by the USPTO to assist patent examiners in examination procedures highlight the importance of two recent Fed Circuit cases: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd.[1] and Berkheimer v. HP Inc.[2]  The Berkheimer memo issued on April 19, 2018, and the Vanda memo issued on June 7, 2018. …

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Fed Circuit Watch: En Banc Denied in Berkheimer and Aatrix

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On May 31, 2018, the Court of Appeals for the Federal Circuit issued two per curiam orders denying petitions for en banc review.  Berkheimer v. HP Inc.,[1] and Aatrix Software, Inc. v. Green Shades Software, Inc.,[2] were decided by a smaller Fed Circuit panels earlier in the year.  Both per curiam orders were heard before …

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SCOTUS Watch: Supreme Court Vacates CBM Scope Definition

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On May 14, 2018, the U.S. Supreme Court granted PNC Bank National Assoc.’s petition for writ of certiorari and vacated the Fed Circuit’s ruling limiting the scope of a covered business method (CBM), in PNC Bank Nat’l Ass’n v. Secure Axcess, LLC.[1]  The Supreme Court, in its orders, wrote: The petition for writ of certiorari …

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Fed Circuit Watch: Innovative Abstract Idea is Still Abstract Idea

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On May 15, 2018, the Court of Appeals for the Federal Circuit handed down SAP America, Inc. v. InvestPic, LLC.[1]  The patent at-issue, U.S. Patent No. 6,349,291 (‘291) was directed to systems and methods for performing statistical analyses of investment information.  In other words, the ‘291 patent claimed subject matter that was merely an innovative …

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Fed Circuit Watch: Merck’s Unclean Hands Render Hep C Patents Unenforceable

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The doctrine of unclean hands is a judicially-created equitable defense in which equitable relief is denied where that party has acted in a fraudulent manner or in bad faith.[1]  Gilead Scis., Inc. v. Merck & Co., Inc.,[2] decided by the Court of Appeals for the Federal Circuit on April 25, 2018, discusses the confluence of …

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Fed Circuit Watch: Technicality in Rules Does Not Eviscerate Showing Patent Infringement

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Because patent infringement is the exclusive jurisdiction of the Court of Appeals for the Federal Circuit, any procedural rules governing the cases are examined under the Federal rules.[1] These confusing and arcane rules sometimes make analysis of patent cases more an exercise of rules research rather than patent law itself. An example is Disc Disease …

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