Future Trends on the Doctrine of Equivalents?

Claims of infringement under the doctrine of equivalents routinely accompany literal infringement claims in patent infringement litigation.  Likewise, patent prosecutors typically try to avoid narrowing the scope of equivalents during prosecution of a patent application.  But, a pair of recent decisions from the Federal Circuit may keep some wondering why all of the fuss. Under … Continue reading Future Trends on the Doctrine of Equivalents?

Reasonable Expectations of Success and Compound Claims “As a Whole”

Challenges to new molecule patents frequently hinge on the question of obviousness in view of a prior art “lead compound.” More often than not, patentees fend off these challenges by successfully arguing against selection or modification of the asserted lead compound, and/or by showing unexpected properties. But when the skilled person had at least some reason … Continue reading Reasonable Expectations of Success and Compound Claims “As a Whole”

USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court

In Cleveland Clinic Foundation v. True Health Diagnostics LLC (nonprecedential), the Federal Circuit affirmed the district court’s order granting defendant’s Rule 12(b)(6) motion to dismiss because the asserted patent claims are invalid under Section 101. The two asserted patents issued from applications that claimed priority to a patent that the Federal Circuit had found invalid … Continue reading USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court

Ex Parte Smith – The Name of the Game is the Claim (and the Specification)

As a follow-up to the post on the release of the 2019 Revised Patent Subject Matter Eligibility Guidance on January 7, 2019, (“Revised Guidance”), the Patent Trial and Appeal Board (“PTAB”) recently decided Ex Parte Smith Appeal No. 2018-000064 on February 1, 2019, in view of the Revised Guidance. The PTAB also designated the decision … Continue reading Ex Parte Smith – The Name of the Game is the Claim (and the Specification)

Even Konami Code Couldn’t Rescue Its Slot-machine Game-related Patents from being Invalidated under Alice

If you’re a child of the 80’s, the name Konami likely takes you back to sitting in front of a tube TV playing some Konami-created game on your Nintendo Entertainment System. For me, my two favorite Konami games were undoubtedly Contra and Gradius. Then, there was the “Konami code” (↑↑↓↓←→←→BA) entered quickly at the beginning … Continue reading Even Konami Code Couldn’t Rescue Its Slot-machine Game-related Patents from being Invalidated under Alice

Keeping It Secret: Protecting Your Invention For Foreign Patenting

You’ve got it: the million dollar idea. You figured out how it works. You know that no one has ever done anything like this before and that your discovery is revolutionary. What do you do now? For many people, the answer to that question isn’t “immediately file a patent application with the United States Patent … Continue reading Keeping It Secret: Protecting Your Invention For Foreign Patenting

Walker Process Antitrust Case: The Ball is in Whose Court?

In a recent game of jurisdictional tennis, the Fifth Circuit returned a case involving a Walker Process claim, sending it back to the Federal Circuit. Xitronix Corp. v. KLA-Tencor Corp., No. 18-50114 (Feb. 15, 2019). In Xitronix, the plaintiff alleged that the defendant was enforcing a fraudulently obtained patent for anti-competitive behavior in a violation … Continue reading Walker Process Antitrust Case: The Ball is in Whose Court?