Patent Law Weblog
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- BioNTech Sues Moderna over mRNA Vaccine Technology
- CNIPA Issues Letter on Identity of Foreign Inventors
- REGENEXBIO Inc. v. Sarepta Therapeutics, Inc. (Fed. Cir. 2026)
- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
- The Ghost in the Machine: Why GenAI Can Be Both a Brilliant Researcher and a Terrible Advocate
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Category: Federal Circuit
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By Andrew Williams — Since the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands LLC last year, there have been hundreds of district court cases that have determined (or reconsidered) whether venue was proper. Correspondingly, because there have been "basic" and "undecided" issues necessary to address the effect of the TC…
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By Kevin E. Noonan — The application of the written description requirement under 35 U.S.C. § 112(a) with regard to disclosed ranges is not always entirely straightforward or intuitively obvious, and this can particularly be the case when the question is involved with another notoriously arcane species of patent law, interferences. (Interference practice was abolished,…
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Purely Business Method Patent Found Ineligible under Section 101 By Joseph Herndon — In an appeal from a rejection in initial examination of appellant Mark Eberra's patent application, the Federal Circuit affirmed the Patent Trial and Appeal Board's ("Board") determination that the claims are patent-ineligible under § 101. The patent application is entitled "Business Method…
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By Andrew Williams — Which parties to an IPR proceeding have standing to either appeal or participate in an appeal from an adverse final written decision by the Board? The Federal Circuit had previously held that a petitioner that did not otherwise have Article III standing could not appeal an adverse decision (Phigenix, Inc. v.…
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By Michael Borella — Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written decisions holding claims 1-4 and 9-10 of the '290 patent obvious. DSS appealed. Claim 1 of…
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By Michael Borella — In early February, the Federal Circuit published an opinion in HP Inc. v. Berkheimer stating clearly –- for the first time — that patent-eligibility under 35 U.S.C. § 101 should be determined as a matter of law, but with possible underlying factual issues. While supported in principle by Supreme Court and previous…
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By Kevin E. Noonan — The Federal Circuit has granted the St. Regis Mohawk Tribe's motion for stay in inter partes review proceedings before the Patent Trial and Appeal Board, in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. In the Order, the Court notes that the PTAB had scheduled final hearing in the IPR for…
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By Michael Borella — Intellectual Ventures (IV) sued Symantec in the District of Delaware, alleging infringement of U.S. Patent No. 5,537,533. The District Court invalidated the '533 patent on a summary judgment motion as being directed to patent-ineligible subject matter. IV appealed. Claim 25 of the '533 patent recites: 25. A method for remote mirroring of…
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By Michael Borella — In Franz Kafka's novel The Trial, a man is accused of a non-specified crime by a shadowy governmental agency. The man repeatedly attempts to understand the nature of his alleged wrongdoing and his accusers. Ultimately, he is executed without these questions being answered. Under current Supreme Court and Federal Circuit rulings (Alice…
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By Kevin E. Noonan — The tortured path that the Federal Circuit has taken (a path also trodden by the U.S. Patent and Trademark Office and the district courts) of applying the patent eligibility decisions under Mayo Collaborative Services v. Prometheus Laboratories, Inc. and Alice Corp. v. CLS Bank Int'l. is illustrated in a 2-1…
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