Patent applicants whose applications have been assigned to the USPTO Technology Center 3600 have been particularly impacted by the Supreme Court’s June 2014 decision in Alice Corp. v. CLS Bank Int’l. However, overcoming 101 rejections for applications assigned to the TC 3600 is still achievable. A good example is U.S. Patent No. 9,444,932, issued in September, 2016.
The Supreme Court recently declined to hear several patent cases, thus leaving the decisions by the Federal Circuit intact. Issues that were not taken up by the Supreme Court include (1) whether performing patented methods for assessing the quality of pharmaceutical compositions is an act of patent infringement by virtue of constituting “making” a product using a patented method and whether practicing such methods is protected from being an act of infringement under the “safe harbor” provisions of the patent law (Amphastar), (2) the patent eligibility of methods developed based on the discovery of biological principles (Genetic Technologies), and (3) the appealability of the USPTO’s Patent Trial and Appeal Board’s decision to terminate inter partes review proceedings after such proceedings have been initiated (GEA Process).
The Federal Circuit recently decided a case concerning three patents owned by Intellectual Ventures I LLC (“IV”). Intellectual Ventures I LLC v. Symantec Corp., Case Nos. 2015-1769, 2015-1770, 2015-1771 (Fed. Cir. Sept. 30, 2016). The district court had invalidated U.S. Patent Nos. 6,460,050 (‘050) and 6,073,142 (‘142) and found that Claim 7 of U.S. Patent No. 5,987,610 (‘610) was patent eligible. The district court had also found that Symantec Corp. (“Symantec”) infringed Claim 7 of the ‘610 patent, leading to an $8 million judgment. On appeal, the Federal Circuit held that all three patents were patent-ineligible under 35 U.S.C. § 101.
The Federal Circuit recently decided two related cases concerning media content delivery patents1 owned by Affinity Labs of Texas, LLC. In both cases, the Federal Circuit held that the patents do not cover patent-eligible subject matter under 35 U.S.C. § 101.
On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written description of its priority application (“Priority App”) and thus entitled to the Priority App filing date. The ’915 Patent is directed to a protein, TBP-II, that binds to and neutralizes TNF-alpha. However, the Priority App discloses only a partial N-terminal sequence of the claimed protein (9 of 15 residues), along with other properties of the protein, including molecular weight, biological activity, and trypsin-degradation characteristics.
The Patent Trials and Appeals Board ruled that Petitioner could not maintain a subsequent proceeding with respect to the same claim on a ground that it “reasonably could have raised” in a prior proceeding despite Petitioner being successful in invalidating those claims in the prior proceeding.
On January 12, 2016, President Barack Obama announced his goal of a nationwide “Cancer Moonshot,” with the ultimate goal of accelerating cancer research “to end cancer as we know it” during his State of the Union Address. As a part of the response, the U.S. Patent and Trademark Office (“the Office”) established a program for accelerated review of patent applications directed toward one particular promising area of cancer research.
The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s star turn might not come.
Can boilerplate language describing possible variations to an invention ever impact validity of a patent? Many software patents include standard “boilerplate” text describing many ways to implement an invention, such as by discussing execution of the software on a smart phone, laptop, mainframe, PDA, audio player, or even a refrigerator! Often, such boilerplate language is added to patent applications with consideration of broadening the potential scope of the recited terms or providing additional support for recited claim terms.
On September 15, 2016, the U.S. Food and Drug Administration approved once-daily YOSPRALA™, a tablet that combines the anti-platelet agent, aspirin, with the anti-acid drug, omeprazole for decreasing the risk of aspirin-associated gastric ulcers in patients who require daily aspirin for secondary prevention of cardiovascular and cerebrovascular events.
