On-Sale Bar Applies to Report Generated by Patented Invention

The on-sale bar spelled the end for some of Quest Integrity’s patent claims against Cokebusters in a recent Federal Circuit decision. Interestingly, the on-sale bar applied not because of a sale of a claimed invention but becaus… Read More

Patent Prior Art Inherency Requires More Than Mere Possibility

A finding that prior art inherently disclosed elements of claims of U.S. Patent No. 7,802,310 was not supported by substantial evidence; the Federal Circuit therefore reversed the Patent Trial and Appeal Board’s conclusion that… Read More

Secret Sales Are Still Prior Art under the On-Sale Bar

In a short, unanimous opinion, the Supreme Court held that “secret sales” count as prior art under the on-sale bar. The Court, in the anticipated case Helsinn Healthcare v. Teva Pharmaceuticals, found that Helsinn’s agreemen… Read More

Single Reference Obviousness Rejection Requires No Motivation

Does an obviousness rejection under 35 U.S.C. § 103 in which a single reference discloses each element require a motivation to combine with another reference? In Realtime Data, LLC v. Iancu, the Federal Circuit said no, upholding… Read More

Plain and Ordinary Claim Construction

In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was n… Read More

Requiring Condition Can Overcome Art Resulting In Condition

A claim that required a specific condition overcame prior art that merely disclosed an embodiment resulting in satisfaction of the condition. In re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2018) (nonprecedential) (C.J. Pr… Read More

When is Patent Prior Art Distinct but Not Different?

Where distinct physical concepts recited in a patent claim and applied prior art are related and can achieve same results, do not count on being able to distinguish teachings of the prior art.  In Mobileye Vision Technologies Ltd… Read More

Patent Drafting Tip: Take Care with Open-Ended Descriptions

Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “inv… Read More

Prior Art is What an Internet Search Engine Sees

A decision holding that an a YouTube video is a printed publication under 35 U.S.C. § 102(a) is a reminder that one should always assume that content on the Internet accessible via a public search engine qualifies as prior art. … Read More

Contemporary Evidence Beats Google Obviousness Challenge

The Federal Circuit recently upheld two patents against an obviousness challenge by Google. (Google v. At Home Bondholders Liquidating Trust (Fed. Cir. 2018).) This case demonstrates the importance of contemporary evidence to supp… Read More

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