Patent 213

New thinking on written description, enablement and patent eligibility issues

Blog Authors

Nicholas J. Landau, Ph.D.

Latest from Patent 213

Patent 213

Patenting COVID-19 Tests: Avoiding the Common Pitfalls

By Nicholas J. Landau, Ph.D.

July 2, 2020

The impact on human health of the global pandemic of the SARS-CoV-2 virus and the resulting disease termed COVID-19 cannot be overstated. Not since the influenza pandemic of 1918 have so many regions of the world been so acutely impacted by a single pathogen. Society in 2020 has the advantage of a more sophisticated biotechnology industry. Testing is considered crucial in controlling (or at least mitigating) the pandemic, and tests from several companies have become…

Patent 213

“Abstract Assertion of Breadth” Does Not Prove Non-Enablement

By Andrew Tuggle

May 27, 2020

McRO, Inc., owns a U.S. patent on a method for animating faces in video games. Back in 2016, when McRO sued a number of video-game developers for patent infringement, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the patent as subject-matter eligible. Now, the CAFC has again upheld the patent, this time against a challenge of non-enablement. Patents must enable the full scope of claims At their core, patents are a…

Patent 213

An Early Out Under § 101 Based on Claimed Long-standing Commercial Practices

By Stephanie D. Scruggs

May 22, 2020

Late last week, the U.S. Court of Appeals for the Federal Circuit delivered ShoppersChoice.com the affirmation it ordered in Electronic Communication Technologies, LLC (ECT) v. ShoppersChoice.com, LLC. In doing so, the court supplied accused infringers with a helpful example of what may be appropriate for early dismissal under 35 U.S.C. § 101. In addition, this opinion discusses the ineligibility of claims directed at long-standing commercial practices. ECT brought suit in the Southern District of Florida…

Patent 213

Done at Step 1: When a Claim Is Tied to an Improvement, No Need to Proceed to Alice Step 2

By Stephanie D. Scruggs

May 11, 2020

By reversing the lower court’s ruling that the asserted claims were not patent-eligible under 35 U.S.C. § 101 in Uniloc v. LG Electronics, the Federal Circuit resurrected Uniloc’s infringement suit against LG Electronics. It also demonstrated what we already know — courts have been inconsistent in their application of the Alice/Mayo test. Nevertheless, this latest opinion provides us with another good example of claim language that the Federal Circuit considers to be non-abstract such that…

Patent 213

Fishing for Eligibility in Murky Waters

By Stephanie D. Scruggs

April 30, 2020

Last week, the Federal Circuit decided that claims related to a method of fishing that involved evaluating the water to be fished were not patent-eligible under 35 U.S.C. § 101. It is a bit of a head scratcher as to why this opinion is deemed precedential — the eligibility analysis employed here under the Alice/Mayo framework certainly did not involve wading into unchartered waters. In any event, In re: Christopher John Rudy is a good reminder…

Patent 213

A Method of Diagnostic Sample Preparation Is Held Valid Under Mayo/Myriad, but the Diagnostic Test Was Held Invalid

By Nicholas J. Landau, Ph.D.

March 27, 2020

Nearly five years ago the U.S. Court of Appeals for the Federal Circuit (CAFC) decided the controversial case of Ariosa v. Sequenom. In Sequenom the invention was a radically new method of fetal genetic testing by amplifying free paternal DNA from the mother’s blood. This test has today largely replaced the previous method of amniocentesis, which was an invasive test with a very high risk of complications. There was no evidence that anyone had ever…

Patent 213

Error-Checking Patent Held Patent Eligible

By Andrew Tuggle

November 25, 2019

KPN is a Dutch telecom company that owns a U.S. patent for detecting errors in data transmission. Last year, the U.S. District Court for the District of Delaware invalidated the patent as ineligible subject matter, but on Friday, a panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed. So, let’s look at what the CAFC said about this data-processing patent. Check data methods Anytime you send data, there is a…

Patent 213

Yet Another Pharmaceutical Patent Falls Under the Scrutiny of 35 U.S.C. § 112

By Stephanie D. Scruggs

November 12, 2019

Last week, the Federal Circuit confirmed that Idenix Pharmaceuticals will not be the proud recipient of what was previously regarded as the largest damages award ever recorded in a U.S. patent case. In fact, the majority’s opinion in Idenix Pharmaceuticals LLC v. Gilead Sciences Inc. not only affirmed the district court’s grant of judgment as a matter of law (JMOL) against Idenix and finding that the asserted claims of U.S. Patent No. 7,608,597 were invalid…

Patent 213

Federal District Court Finds Claims Directed to Dog Chew Toy Patent Eligible

By Ryan J. Letson

October 25, 2019

Few subjects have drawn as much interest among patent stakeholders and practitioners as understanding the framework used to determine a patent claim’s eligibility. Courts continue to address different factual situations in applying the two-step test for patent eligibility under 35 USC § 101 that the Supreme Court set out in Alice Corp. Pty. Ltd. V. CLS Bank Int’l., 537 U.S. 208, 217 (2014).Courts generally ask whether a claim is directed to patent eligible subject matter…

Patent 213

The Risk of Using “Consisting Essentially of” in Patent Claims

By Stephanie D. Scruggs

October 18, 2019

The legal meaning of the transition language “consisting essentially of” is well-established in Federal Circuit case law and is generally construed to mean that the composition or formulation (a) necessarily includes the listed ingredients and (b) is open to unlisted ingredients that do not materially affect the basic and novel properties of the composition. Similarly, when “consisting essentially of” is used in a process claim, the claim requires that the listed steps are performed, but…

Patent 213

New thinking on written description, enablement and patent eligibility issues

Blog Authors

Patenting COVID-19 Tests: Avoiding the Common Pitfalls

“Abstract Assertion of Breadth” Does Not Prove Non-Enablement

An Early Out Under § 101 Based on Claimed Long-standing Commercial Practices

Done at Step 1: When a Claim Is Tied to an Improvement, No Need to Proceed to Alice Step 2

Fishing for Eligibility in Murky Waters

A Method of Diagnostic Sample Preparation Is Held Valid Under Mayo/Myriad, but the Diagnostic Test Was Held Invalid

Error-Checking Patent Held Patent Eligible

Yet Another Pharmaceutical Patent Falls Under the Scrutiny of 35 U.S.C. § 112

Federal District Court Finds Claims Directed to Dog Chew Toy Patent Eligible

The Risk of Using “Consisting Essentially of” in Patent Claims

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