Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art.
Continue Reading Bizarre Facts Beget Bizarre Result
PatentNext Summary: Sufficiency of disclosure for Artificial Intelligence (AI) inventions in the U.S. can be supported by expert testimony opining on the knowledge that one of ordinary skill in the art would have held based on the disclosure for the
Continue Reading Sufficiency of Disclosure for Artificial Intelligence Patents – U.S. Case Example
PatentNext Summary: In order to prepare patent applications for filing in multiple jurisdictions, practitioners should be cognizant of claiming styles of the various jurisdictions that they expect to file AI-related patent applications in, and draft claims accordingly. For example, different
Continue Reading A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO
Recent Federal Circuit decisions call into question the value of patents broadly claiming inventions on antibodies and their function in treating debilitating diseases. The decisions in these cases originated in district courts and arguably swept aside the merits of scientific
Continue Reading The Headaches in Claiming Antibody-based Inventions Broadly
Over a thorough dissent by Judge O’Malley, the Federal Circuit determined it lacked jurisdiction to review the Board’s decision to institute IPR despite an arbitration agreement between the parties. In re Maxpower Semiconductor, Inc., 2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953, 2021
Continue Reading IPR Institution Despite Arbitration Agreement Is Not Appealable
On May 28, 2021, the Federal Circuit found obvious the claims of a patent directed to telepharmacy, describing a process allowing a pharmacist to remotely supervise and approve the work of non-pharmacists in filling drug orders. The court reversed the
Continue Reading An Invalidated Patent Still Qualifies As 102(e) Art
PatentNext Summary: In some instances, software-based patent applications can fail to include a sufficient algorithm describing “how” the software interacts with the underlying hardware of the invention. This can lead to issues in both prosecution and litigation, creating unnecessary expense
Continue Reading Why including an “Algorithm” is Important for Software Patents (Part 2)
In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream’s claims, directed to publishing content on social networking websites, are
Continue Reading Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence
PatentNext Summary: The development of modern medical devices increasingly includes the use of software for performing sophisticated diagnostic or treatment-related functions. In fact, the U.S. Food and Drug Administration (FDA) now defines specific categories of software-based medical devices that include
Continue Reading Patenting Software-based Medical Devices (Part 1)
On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held
Continue Reading The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions
