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: Novelty
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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 — An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko. In that case the Court held that the Federal Circuit was bound by the provisions (5 U.S.C. § 706) of the Administrative Procedures…
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Steam Controller Litigation Makes Another Appearance before Federal Circuit By Andrew Velzen — Introduction On April 23, 2025, the Federal Circuit rendered an opinion in Valve Corp. v. Ironburg Inventions Ltd. surrounding U.S. Patent No. 9,289,688 (the '688 patent"). This marks the second time that the Federal Circuit has weighed in on this patent (the…
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By Kevin E. Noonan — When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton Dickinson & Co. ("BD") withdrew after prevailing in having all challenged claims invalidated for…
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By Kevin E. Noonan — Completing a recent jurisprudential "hat trick,"* the Federal Circuit affirmed a District Court grant of a preliminary injunction against a biosimilar applicant for Regeneron's EYLEA biologic drug in Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc. As in the earlier appeals, the injunction was based on infringement by Celltrion's EYLEA biosimilar (designated…
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By Kevin E. Noonan – One of the many changes introduced into U.S. patent law by the Leahy-Smith America Invents Act were provisions for post-grant review (PGR) and inter partes review (IPR). There have been thousands of these proceedings instituted since their enactment into law, and the contours of how the Patent Trial and Appeal Board (PTAB)…
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By Kevin E. Noonan – The Federal Circuit dismissed an appeal from an unsuccessful challenger in an inter partes review (IPR) proceeding based on failure to satisfy the standing requirements for appeal in Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, Inc. The case arose in an IPR over U.S. Patent No. 10,149,820, directed to compositions and methods for…
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By Kevin E. Noonan – "This application claims priority to [properly identified earlier-filed application, the disclosure of which is expressly incorporated herein in its entirety" is a phrase commonly found in patents and patent applications as an attempt to bolster disclosure without burdening the specification unnecessarily. Like many (most) stratagems, use of this phrase can give…
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By Kevin E. Noonan – Minerva and Hologic, competitors selling devices used for ablating uterine endometrial tissue, are notable for their dispute last year that gave the Supreme Court an opportunity to reassess an established patent law doctrine, assignor estoppel (reminiscent of the Court's review of the Federal Circuit's standard for obviousness in KSR Int'l v.…
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By Kevin E. Noonan – On November 15th, the Federal Circuit handed down its opinion affirming all aspects of the District Court's decision in Pharmacyclics LLC v. Alvogen, Inc. The case illustrates once more the importance of the clear error standard in support of factual aspects of a district court's decision, even regarding ultimate questions of…
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