Inventorship remains the touchstone of who owns patentable technology. Yet inventorship remains, at times, one of the most perplexing and contentious aspects of patent law.
Case in point is the recent 111-page decision in Dana-Faber Cancer Institute, Inc. v. Ono
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Future Trends on the Doctrine of Equivalents?
Claims of infringement under the doctrine of equivalents routinely accompany literal infringement claims in patent infringement litigation. Likewise, patent prosecutors typically try to avoid narrowing the scope of equivalents during prosecution of a patent application. But, a pair of recent…
Future Trends on the Doctrine of Equivalents?
Claims of infringement under the doctrine of equivalents routinely accompany literal infringement claims in patent infringement litigation. Likewise, patent prosecutors typically try to avoid narrowing the scope of equivalents during prosecution of a patent application. But, a pair of recent…
Reasonable Expectations of Success and Compound Claims “As a Whole”
Challenges to new molecule patents frequently hinge on the question of obviousness in view of a prior art “lead compound.” More often than not, patentees fend off these challenges by successfully arguing against selection or modification of the asserted lead compound,…
Reasonable Expectations of Success and Compound Claims “As a Whole”
Challenges to new molecule patents frequently hinge on the question of obviousness in view of a prior art “lead compound.” More often than not, patentees fend off these challenges by successfully arguing against selection or modification of the asserted lead compound,…
USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court
By Gil Espinoza
In Cleveland Clinic Foundation v. True Health Diagnostics LLC (nonprecedential), the Federal Circuit affirmed the district court’s order granting defendant’s Rule 12(b)(6) motion to dismiss because the asserted patent claims are invalid under Section 101. The two asserted patents issued…
USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court
By Gil Espinoza
In Cleveland Clinic Foundation v. True Health Diagnostics LLC (nonprecedential), the Federal Circuit affirmed the district court’s order granting defendant’s Rule 12(b)(6) motion to dismiss because the asserted patent claims are invalid under Section 101. The two asserted patents issued…
A Good Reminder that Electrical Claims and Specifications Should Focus on the How, not Just the What
By Brian McCall
In today’s post-Alice landscape, patent practitioners have developed a gut-feeling about patent eligibility that helps them in various aspects of daily life: advising clients regarding asserted patents, developing office action responses, probing questions in invention disclosure meetings, and drafting effective…
Ex Parte Smith – The Name of the Game is the Claim (and the Specification)
As a follow-up to the post on the release of the 2019 Revised Patent Subject Matter Eligibility Guidance on January 7, 2019, (“Revised Guidance”), the Patent Trial and Appeal Board (“PTAB”) recently decided Ex Parte Smith Appeal No. 2018-000064 on…
Even Konami Code Couldn’t Rescue Its Slot-machine Game-related Patents from being Invalidated under Alice
If you’re a child of the 80’s, the name Konami likely takes you back to sitting in front of a tube TV playing some Konami-created game on your Nintendo Entertainment System. For me, my two favorite Konami games were undoubtedly…