Decision: Supplemental Examination No. 96/000,132 Holding: All reexamined claims canceled Background: The America Invents Act created supplemental examination as a new way for patentees to have the Patent Office consider, reconsider, and correct information relevant to a patent’s enforceability. 35 U.S.C. § 257(a). Within three months of receiving the information, the Office determines whether the submission raises a substantial new question of patentability (SNQ). Id. If not, the process concludes and the patent remains intact. But if…

Since the Supreme Court decided Alice v. CLS Bank in June 2014, the USPTO regularly issued new memoranda explaining its implementation of the § 101 framework. This includes some of the more notable memos for prosecutors: the memo on Enfish v. Microsoft from May 2016, the memo on McRO and BASCOM from November 2016, and dozens of eligibility examples. Much of that guidance is incorporated into the MPEP. While the guidance does not have the force…

Decision: Total Rebuild, Inc. v. PHC Fluid Power, LLC, No. 6:15-CV-1855 (W.D. La. Oct. 15, 2019) Holding: All claims rendered unenforceable for inequitable conduct, and case dismissed with prejudice. Background: Every person associated with the filing and prosecution of a patent application has an affirmative and continuing duty of good faith and candor in his dealings with the USPTO.  37 C.F.R. § 1.56.  That duty “includes the duty to disclose to the Office all information” material…