Publications

Bioisosterism, by Itself, May Not be Sufficient Motivation to Modify a Lead Compound

In the recent decision, Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., the Federal Circuit affirmed the PTAB's finding that Claims 8 to 13 of U.S. Reissue Patent 38,551 ("the '551 patent") owned by Research Corporation Technologies, Inc. ("RCT") are not unpatentable.

Federal Circuit Finds a Diagnostic Method Ineligible Under Section 101

In another diagnostic method dispute, the Federal Circuit found the asserted patent claims ineligible under 35 U.S.C. Section 101.

As the Climate for U.S. Patents Turns Brighter, Now is the Right Time to Invest in These Assets

An article by Philippe Signore titled "As the Climate for U.S. Patents Turns Brighter, Now is the Right Time to Invest in These Assets" is published in IPWatchdog.

IP Watchdog

Realtime Data, LLC, v. Iancu: No Requirement to Make Any Finding of a Motivation to Combine Two References When a Claim is Invalid as Being Obvious Over a Single Reference

The Federal Circuit affirmed the Patent and Trademark Appeal Board's (PTAB) determination that all of the challenged claims of Realtime's U.S. Patent 6,597,812 ("the ‘812 patent") would have been obvious over the prior art.

PTAB Rules That Section 101 Rejections Are Proper When Raised As Part Of An IPR Motion To Amend

It is quite common for IPR petitioners to raise § 112 defenses in opposition to a motion to amend filed by the patent owner. What's less common is for the petitioner to argue that the proposed amended claims fail to recite patentable subject matter under § 101.

USPTO's Patent Term Adjustment Policies Reigned in Yet Again

Since the Federal Circuit's decision in Wyeth v. Kappos, 591 F.3d 1364, 93 U.S.P.Q. 2d 1257 (Fed. Cir. 2010), aff'g, Wyeth v. Dudas, 580 F. Supp. 2d 138, 88 U.S.P.Q.2d 1538 (D.D.C. 2008), which held that the USPTO was improperly reducing patent term adjustment (PTA) by improperly calculating "overlapping" days of agency delay under 35 U.S.C. §154, the courts have been asked on numerous occasions to look at how the USPTO is calculating PTA.

$31.6M Award Illustrates Risks in Co-Development Deals, Even Decades Later

Derek Mason is quoted in a recent article by Technology Transfer Tactics.

Technology Transfer Tactics - January Issue

Supreme Court Holds that the AIA did not Change Long-Standing Precedent Governing the On-Sale Bar

As reported here previously, the U.S. Court of Appeals for the Federal Circuit (CACF) interpreted for the first time the new prior art provision (35 USC 102(a)(1)) of the American Invents Act (AIA). The CAFC held that an invention could be "on sale," and thus barred from patentability, even if the details of the claimed invention were not made available to the public via the sale or offer for sale. This holding came as a surprise to many commentators who believed that the new language in Article 102(a)(1) "or otherwise available to the public" modified the preceding phrase on sale.

Assignor Estoppel and IPRs: Possible Impact of Arista v. Cisco on Employment or Assignment Agreements

An article by Derek Mason titled "Assignor Estoppel and IPRs: Possible Impact of Arista v. Cisco on Employment or Assignment Agreements" is published in IPWatchdog.

IPWatchdog

New 101 Guidance: Back to the Future?