By Michelle E. O’Brien and Tom Irving The Court of Appeals for the Federal Circuit today affirmed the U.S. Patent Office’s findings that claims in four patents were unpatentable because they are not patentably distinct from claims in other patents in the same family. In re Cellect, LLC, Nos. 2022-1293, 2022-1294, 2022-1295, 2022-1296 (August [...]
By Scott Amankwatia, Michelle E. O’Brien, and Tom Irving The United States Court of Appeals for the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s decision in an ex parte appeal affirming the U.S. Patent Office Examiner’s rejection of claims 1-13, 16, 22-24, and 27 of U.S. Patent Application No. 15/909,314 as [...]
By Tom Irving and Michelle E. O’Brien In a much-anticipated decision, today the Supreme Court affirmed invalidity of two Amgen patents in Amgen Inc., et al. v. Sanofi, et al. (Case No. 21-757), with Justice Gorsuch writing for a unanimous Court. The case is of particular interest because it pits one brand pharma company, [...]
By Christine Norris, Michelle E. O’Brien, and Tom Irving The simple one letter word, “a” continues to spawn significant ambiguity in U.S. patent claim construction. We have seen the Federal Circuit interpret the term “a” open-endedly to leave room for plural claim elements (one or more), or as inferring a singular claim element (one). The [...]
By Michelle O’Brien, Bob Hansen, and Tom Irving The United States Patent and Trademark Office (USPTO) has issued an Advance Notice of Proposed Rulemaking (ANPRM) seeking comments on various modifications, under consideration, to the rules of practice for inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board [...]
Inter Partes Reviews (IPRs) are becoming ever more popular avenues for challenging issued patents. While IPRs have the benefits of being quicker and potentially cheaper than a district court litigation, one potential drawback is the estoppel provision of 35 U.S.C. § 315(e)(1) which limits the petitioner from reasserting invalidity grounds in a district court or [...]
Marbury senior counsel David Hyams was quoted in the news this week on emerging healthcare technology. Mr. Hyams spoke with FierceHealthcare about recently published patent applications made by Apple and what they may imply about the technology company’s possible moves into the electronic health records space. “Apple’s thinking could be to provide all of your [...]
The Federal Circuit has provided further clarification to the troublingly unclear “abstract idea” concept originally articulated by the US Supreme Court. According to the Supreme Court, patent protection does not extend to the patent ineligible concepts of laws of nature, natural phenomena, and abstract ideas, which are “building blocks of human ingenuity...We must therefore distinguish [...]
On November 16, 2018, The Federal Circuit held that yet another set of claims is “not directed to an abstract idea,” reversing a lower court decision dismissing a suit by Ancora Technologies Inc. asserting that HTC Corp. had infringed its patent. Ancora’s patent covers technology that prevents a software program from running on a computer [...]
In the United States, one of the requirements to get a patent is that the claimed invention must not have been previously “described in a printed publication.” See 35 U.S.C. § 102(a)(1). While seeming a simple requirement, the question many inventors have is “what does “a printed publication” actual mean?” Intuitively, inventors understand that a [...]
