The United States Patent and Trademark Office (USPTO) recently published a new revision to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP) (Revision 08.2017). This revision added a number of chapters about patent-eligibility, the duty to disclose information to the office and other key patent law issues.
Before Newman, Wallach, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Disclosure of a species may provide written description support for a claimed genus when the field of invention is a predictable art.
Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: Where the Federal Circuit had previously construed the same claim term in an appeal involving a related patent also owned by the patentee in the present case, collateral estoppel applied as to the construction of that term in this appeal even though the claims were not identical.
Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board
Summary: In an inter partes review proceeding, broadest reasonable interpretation of a claim term must encompass all embodiments unless there is a support for a narrower interpretation.
On March 6, 2018 the USPTO announced that it has started a pilot program that makes it easy to report specimens that have been digitally created, altered or fabricated. Third parties that believe that an application contains suspect specimens can now send an email to TMSpecimenProtest@uspto.gov to report such issues.
In two recent cases, the Federal Circuit addressed the role of factual questions in resolving patent eligibility under 35 U.S.C. § 101. The first case was Berkheimer v. HP Inc. and the second was Aatrix Software v. Green Shades Software.[1] These cases possibly undercut the holdings of previous cases in which the Federal Circuit routinely affirmed judgments invalidating patent claims under § 101 in the early stages of litigation, when factual questions are typically unresolved.[2]
On February 8, 2018, Judge Andrew Guilford of the District Court for Central District of California increased a jury award against Custom Blinds and Components Inc. (“CBC”) for patent infringement from just over $1 Million to $3 Million.
Before Lourie, Reyna, and Chen. Appeal from the U.S. District Court for the Eastern District of Texas, Judge J. Rodney Gilstrap.
Summary: Filing a terminal disclaimer to overcome an obviousness-type double patenting rejection is not an admission that the continuation claims are patentably indistinct over the parent.
Jasmin Larian, the owner of Cult Gaia, started selling the “Ark” bag in 2013. Since then the Ark bag has been seen on celebrities including Jessica Alba and was even touted as 2017’s “IT” bag.
The PTAB held that all of Genentech’s challenged antibody purification claims were unpatentable as being anticipated, obvious, or both, in an IPR filed by Hospira and Pfizer, Hospira, Inc., v. Genentech, Inc., IPR2016-01837, Paper 40 (P.T.A.B. March 6, 2018).
