Arguments in Patent Appeal Reply Brief Wrongly Ignored

The Federal Circuit has clarified what arguments may be made in a reply brief during a patent appeal. In In Re: Durance, No. 2017-1486 (Fed. Cir. Jun. 1, 2018), the Federal Circuit vacated the PTAB’s obviousness decision and rem… Read More

Prosecution History Crucial for Claim Interpretation of “Remote”

The Federal Circuit has again highlighted the importance of prosecution history for patent claim interpretation. In Baker v. Microsoft Corp., No. 2017-2357 (Fed. Cir. Apr. 9, 2018) the Federal Circuit upheld a district court claim… Read More

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More

When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Tri… Read More

Patent Eligibility and Obviousness in a Covered Business Method Patent Review

The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading… Read More

When Is Hindsight Impermissible in an Obviousness Rejection?

According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc.… Read More

CAFC Affirms PTAB Claim Construction of “Connected”

In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permane… Read More

Pleading Joint Patent Infringement

Pleading joint patent infringement of a method claim requires alleging that one defendant controlled the action of a third party or that two parties were engaged in a joint venture. In Sonrai System, LLC v. AMCS Group Inc., No. 16… Read More

Patent Prior Art and the Necessity Requirement for Inherency

A patent claim limitation can only be inherently disclosed by patent prior art when such limitation is necessarily a component of a disclosed subject matter. In Southwire Co. v. Cerro Wire LLC, No. 2016-2287 (Fed. Cir. Sept. 8, 20… Read More

Patent Claim Preamble Not Limiting, Infringement Not Derailed

Here is a case illustrating the general rule that the preamble of a patent claim is rarely construed as a substantive claim limitation. In Georgetown Rail Equipment Co. v. Holland L.P.¸ No. 2016-2297 (Fed. Cir. Aug. 1, 2017), the… Read More