Patent Law Weblog
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- CNIPA Issues Letter on Identity of Foreign Inventors
- REGENEXBIO Inc. v. Sarepta Therapeutics, Inc. (Fed. Cir. 2026)
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- 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 — It has been just over a month since the Federal Circuit's fractured en banc ruling in CLS Bank Int'l v. Alice Corp. regarding patent-eligibility of computer-implemented inventions under 35 U.S.C. § 101. Last week, the Court decided another § 101 case, Ultramercial, Inc. v. Hulu, LLC. Of interest is that the…
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By Andrew Williams — When is it undue experimentation in practicing the full scope of a claim that contains a genus of chemical compounds and a functional limitation of activity, when the specification provides a method to assess the claimed functional activity (and it can be routinely performed by one skilled in the art)? The…
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By Andrew Williams — When is a combination of two separate treatments for a particular disease obvious-to-try, such that it is rendered obvious for the purposes of patentability? The Supreme Court answered this question in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), when it said that "obvious to try might show that…
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By Andrew Williams — Can the claim term "substantially pure" mean two different things when the specification uses the same term to refer to both an intermediate compound and a final drug product in a specification? The Federal Circuit recently answered the question in the affirmative, in Aventis Pharma. Inc. v. Amino Chemicals Ltd., depending…
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By Kevin E. Noonan — "The name of the game is the claim." — Judge Giles Sutherland Rich Much has and will continue to be written about the Federal Circuit's en banc decision in CLS Bank Int'l v. Alice Corp. last week, and most of the commentary has and will be critical of the path…
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By Kevin E. Noonan — Enactment of the Leahy-Smith America Invents Act in 2011 focused the patenting community on the changes of U.S. patent law from "first to invent" under the 1952 Patent Act to "first inventor to file" under the AIA as the basis for deciding priority and defining the scope of prior art…
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By Michael Borella — A previous post presented the background of this case, as well as Judge Lourie's plurality concurrence, and a second post addressed Chief Judge Rader's concurrence-in-part and dissent-in-part. As noted in those posts, Alice's claimed inventions involved the reduction of settlement risk using a third-party intermediary. This post continues the story of…
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By Michael Borella — A previous post presented the background of this case, as well as Judge Lourie's plurality concurrence. As noted in that post, Alice's claimed inventions involved the reduction of settlement risk using a third-party intermediary. Despite the claims being of various statutory classes, including process, article of manufacture, and machine, Judge Lourie…
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By Michael Borella — On May 10, the Federal Circuit handed down a much anticipated en banc ruling regarding the patent eligibility of computer-implemented inventions under 35 U.S.C. § 101. In a per curiam opinion that is perhaps the most important § 101 jurisprudence since the Supreme Court's Bilski v. Kappos and Mayo v. Prometheus…
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By Donald Zuhn — On March 28, the Federal Circuit in Rubin v. General Hospital Corp. affirmed judgment by the District Court for the District of Massachusetts dismissing the suit brought by Drs. Berish Rubin and Sylvia Anderson against The General Hospital Corporation requesting correction of U.S. Patent Nos. 7,388,093 and 7,407,756, which are assigned…
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