Knobbe/Martens: Intellectual Property Law

Sean S. Kim

Federal Circuit Rejects Written Description Analysis That Ignored Relevant Factors

July 8, 2019 Sean S. Kim and Jeremy Anapol


Before Moore, Reyna, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: Written description support for a claimed genus depends on the criticality or importance of the expressly disclosed species and the predictability of the relevant technology.

Global IP Holdings, LLC (Global) owns U.S. Patent No. 8,690,233 directed to carpeted automotive vehicle load floors.  The ’233 patent claims a load floor with thermoplastic skins and a thermoplastic cellular core.  Global filed a reissue application seeking to broaden the claims, replacing the term “thermoplastic” with “plastic.”  Global submitted a declaration stating that use of plastic other than thermoplastic for vehicle load floors was known in the art at the time of the invention.  


April 12, 2019 Sean S. Kim and Christie Matthaei

Before Newman, O’Malley, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: Diligence requires “reasonably continuous diligence” and is not negated if the inventor works on improvements and evaluates alternatives while developing an invention. 



December 10, 2018 Sean S. Kim and Nicole R. Townes

Before Lourie, O’Malley, and Stoll.  Appeal from the United States International Trade Commission.

Summary: After institution, the Commission cannot without opposition or appearance from respondents assert insufficient pleadings as a basis for denying relief under 19 U.S.C. § 1337(g)(1).  


Apple Watch Receives Clearance from FDA as an Over-the-Counter ECG-monitoring Device

October 11, 2018 Sean S. Kim

On September 12, 2018, Apple released its new Apple Watch Series 4 with a new ECG app that can take an electrocardiogram (ECG). Apple’s new Apple Watch Series 4 has been granted De Novo classification by the FDA, which allows Apple to provide its Series 4 Apple Watches as an over-the-counter ECG-monitoring device.


July 26, 2018 Sean S. Kim and Adam Powell

Before Frost, Newman, and Lawrie.  Appeal from the U.S. District Court for the Eastern District of Texas.

Summary: A weak showing of secondary considerations is insufficient to create a genuine dispute of fact sufficient to overcome a strong showing of obviousness. 


FDA Approval for Auris’ Robotic Endoscopy Platform

April 27, 2018 Sean S. Kim

On March 23, Auris Health, Inc. announced FDA clearance for the Monarch Platform, Auris’ new system for robotic endoscopy. According to Auris Health, the Monarch Platform “integrates the latest advancements in robotics, micro-instrumentation, endoscope design, sensing, and data science into one platform.”


April 18, 2018 Sean S. Kim and Mark Kachner

Before Lourie, O’Malley, and Wallach. Appeal from the United States District Court for the Northern District of Texas

Summary: When a case is dismissed with prejudice for lack of standing, the defendant is the prevailing party for purposes of fee-shifting under 35 U.S.C. § 285.

Boston Scientific Announces Acquisition of EMcision

March 8, 2018 Sean S. Kim

On March 5, 2018, Boston Scientific announced its acquisition of EMcision, a privately held company in the United Kingdom and Canada. According to Boston Scientific, this acquisition will expand its range of medical devices in the field of minimally invasive endoluminal procedures as alternatives to conventional surgery.

FDA Clears New Surgery Infection Control System

February 26, 2018 Sean S. Kim

The FDA recently cleared Prescient Surgical’s CleanCisionTM  Wound Retraction and Protection System (CleanCisionTM), a retractable device designed to prevent surgical site infection.

Attorney Finder