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 Pharmaceutical Co., Ltd., et. al, Case No. 15-13443, by Judge Saris in the United States District Court in Massachusetts.  On May 17, 2019, Judge Saris ordered that two American scientists, Gordon Freeman and Clive Wood,…
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 decisions from the Federal Circuit may keep some wondering why all of the fuss. Under the doctrine of equivalents, a product or process that does not literally infringe may nonetheless be found to infringe if…
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 decisions from the Federal Circuit may keep some wondering why all of the fuss. Under the doctrine of equivalents, a product or process that does not literally infringe may nonetheless be found to infringe if…
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, and/or by showing unexpected properties. But when the skilled person had at least some reason to select and appropriately modify a lead compound, and unexpected results fail, can “no reasonable expectation of success” save the…
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, and/or by showing unexpected properties. But when the skilled person had at least some reason to select and appropriately modify a lead compound, and unexpected results fail, can “no reasonable expectation of success” save the…
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 from applications that claimed priority to a patent that the Federal Circuit had found invalid because it was directed to ineligible subject matter under Section 101. After the claims of the parent patent were invalidated,…
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 from applications that claimed priority to a patent that the Federal Circuit had found invalid because it was directed to ineligible subject matter under Section 101. After the claims of the parent patent were invalidated,…
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 patent applications, to name a few. If an inventor came to me and said their invention related to a charging system for electric vehicles, I’d probably have a gut feeling that the technology is patent…
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 February 1, 2019, in view of the Revised Guidance. The PTAB also designated the decision in Ex Parte Smith as informative on March 19, 2019. Now, what is so surprising about Ex Parte Smith? The…
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 Contra and Gradius. Then, there was the “Konami code” (↑↑↓↓←→←→BA) entered quickly at the beginning of either game to get full power-ups for your ship in Gradius, or 99 lives in Contra. I can taste…