Patent Law Weblog
recent posts
- Why the Alice Test is Stupid, Part IV: The Usefulness Paradox
- Teva Capitulates to Federal Trade Commission Coercion
- USPTO Issues Memoranda on Subject Matter Eligibility
- USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same
- Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims
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Category: Federal Circuit
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An inevitable and tragic outcome By Kevin E. Noonan — Congress in writing laws is faced with a dilemma. On the one hand the laws must be sufficiently clear and specific to enable enforcement, but on the other, the myriad of circumstances that can arise make it impossible to delineate with sufficient prescience the multitude…
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By Kevin E. Noonan — The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in an inter partes review prompted by an infringement allegation in DexCom, Inc. v. Stewart (nonprecedential). The dispute created an opportunity for the Court to acknowledge the importance of the…
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By Kevin E. Noonan — A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal Circuit thereafter under 35 U.S.C. § 141. While there is no right…
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By Kevin E. Noonan — Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial evidence, pursuant to the provisions of the Administrative Procedure Act (codified at 5 U.S.C. § 706). Such deference is…
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By Kevin E. Noonan — Inexorable, inevitable, and regrettable are three words that come to mind with publication from the Report from Special Committee of the Federal Circuit (composed of Chief Judge Moore and Judges Prost and Taranto) containing, inter alia, their recommendation that suspension of Judge Pauline Newman be extended for yet another year.…
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By Kevin E. Noonan — The doctrine of equivalents (DOE), a creation of the Supreme Court in Graver Tank & Mfg. v. Linde Air Products (1950), is balanced by the concept of prosecution history estoppel (PHE), the contours of which were delineated over an exhaustive (eight decisions over twelve years) back-and-forth between District Courts, the…
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By Kevin E. Noonan — Received wisdom is that inter partes review proceedings are limited to prior art as defined by patents and printed publications. But in recently decided Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., another prior art species, applicant-admitted prior art (AAPA), played a strong role in helping the Petitioner satisfy the burden…
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By Manav Das — The landscape of patent law for artificial intelligence (AI) and machine learning (ML) innovations has become fraught with uncertainty. The U.S. Court of Appeals for the Federal Circuit's precedential opinion in Recentive Analytics, Inc. v. Fox Corp.[1], issued on April 18, 2025, represents a watershed moment for the starkness with which…
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By Kevin E. Noonan — Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure § 2111.03). They are termed "transitional" because they mediate the transition between a claim preamble and the…
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By Kevin E. Noonan — As has been noted recently (Agilent Technologies, Inc. v. Synthego Corp.), fact-based decisions from the U.S. Patent and Trademark Office (typically from the Patent Trial and Appeal Board) are reviewed under the substantial evidence standard enunciated in the Administrative Procedures Act (5 U.S.C. § 706) according to the Supreme Court's…
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