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: Obviousness
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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and Appeal Board (PTAB) in an inter partes review prompted by an infringement allegation in DexCom, Inc. v. Stewart (nonprecedential).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 — 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 — 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 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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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 — The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims, frequently on obviousness grounds. Failure to so find, in addition to being less…
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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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