Patent Law Weblog
recent posts
- 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 Michael Borella — Intellectual Ventures I (IV) brought an action against Erie Indemnity Company in the Western District of Pennsylvania, alleging infringement of U.S. Patent No. 7,757,298. Erie filed a motion to dismiss under Rule 12(b)(6), contending that the claims of the '298 patent did not meet the eligibility requirements of 35 U.S.C. § 101. …
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By Kevin E. Noonan – The Federal Circuit reversed a finding of non-obviousness on Friday based on clear error by the District Court on factual underpinnings of its obviousness determination, in Bayer Pharma AG v. Watson Laboratories, Inc. Such decisions are rare, in view of the relevant standard of review. The standard of review after a…
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By Michael Borella — Two-Way Media brought an action against Comcast in the District of Delaware, claiming infringement of U.S. Patent Nos. 5,778,187, 5,983,005, 6,434,622, and 7,266,686. The District Court dismissed the case on the pleadings, finding that all of the claims were ineligible under 35 U.S.C. § 101. Two-Way Media appealed, and the Federal Circuit…
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By Kevin E. Noonan – The Federal Circuit continues its explication of the law of obviousness post-KSR Int'l. v. Teleflex Inc. (and Judge Pauline Newman continues to disagree with her brethren in some regards) in a decision handed down last Friday, in Merck Sharp & Dohme Corp. v. Hospira, Inc. The case arose in an ANDA…
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By Michael Borella — Three years ago, the Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural…
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By Kevin E. Noonan – The Supreme Court most recently revisited the proper standards for making an obviousness determination ten years ago, in KSR Int'l. Co. v. Teleflex. Inc. While in some ways changing the obviousness standard, for example expanding the scope and relevance of analogous art, and clarifying other aspects, such as when being "obvious…
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Patents Directed to Mail Barcodes Found to be Directed to Ineligible Subject Matter By Joseph Herndon — Secured Mail Solutions LLC appealed from the U.S. District Court for the Central District of California's grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for…
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By Kevin E. Noonan – The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for deciding ex parte appeals of Examiner rejections that fell within the purview of its predecessor, the Board…
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More Than a Mere Academic Exercise By Andrew Williams — Today, in Aqua Products, Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings. This case should result in more claim…
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By Kevin E. Noonan – Patent law has always been tasked with interpreting law in an ever-shifting factual environment, where well-established principles need to be applied to new technology. Twenty years ago, the Federal Circuit grappled with the application of the written description requirement to biotechnology inventions, in seminal cases beginning with Regents of the University…
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