Imagine That IP Law Blog

The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements under 35 U.S.C. § 112. Traditionally, the POSITA is defined by their technical competence and ordinary creativity, enabling them to recognize and combine known methods to achieve predictable outcomes. However, with advances in generative AI such as ChatGPT, a new question arises: could such AI fulfill the role of the POSITA, including providing a benchmark ... Read More ›

The United States Patent and Trademark Office (USPTO) today announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. Originally launched in 2013 to facilitate better interaction between patent applicants and examiners after a final rejection, AFCP 2.0 provided a framework for further consideration of claims without the need for expensive and time-consuming appeals or Requests for Continued Examination (RCEs). The program's expiration marks the end of a decade-long pilot, but the USPTO has extended the deadline for final requests ... Read More ›

Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas. A common issue arises when patents claim a desired result without providing the specific method or process for achieving that result. In this blog post, we explore the legal ... Read More ›

UPDATE:  On September 30, 2024 The United States Patent and Trademark Office  announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. See The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened ... Read More ›

The case of Contour IP Holding LLC v. GoPro, Inc. is the first time since October 2021’s Cosmokey Sols. GMBH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091  where the U.S. Court of Appeals for the Federal Circuit has reversed a district court holding of ineligibility under 35 U.S.C. § 101. Accordingly, the Federal Circuit’s September 9, 2024 decision provides valuable insights into how patent eligibility is assessed, particularly for innovations related to video technology.

Background of the Case
Contour IP Holding LLC (“Contour”) filed suit against GoPro, Inc. (“GoPro”) for ... Read More ›

On September 3, 2024, the United States Court of Appeals for the Federal Circuit rendered a significant decision in Broadband iTV, Inc. v. Amazon.com, Inc., which reaffirms the stringent approach towards patent eligibility under 35 U.S.C. § 101. The case concerned five patents owned by Broadband iTV (BBiTV), all related to video-on-demand technology and electronic program guides. BBiTV accused Amazon of infringing these patents, but Amazon successfully moved for summary judgment on the grounds that the patents claimed ineligible subject matter. The Federal Circuit affirmed ... Read More ›

In the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd., the Federal Circuit addressed the issue of obviousness-type double patenting (ODP) concerning claim 40 of U.S. Patent No. 7,741,356 (the '356 patent). This patent was challenged based on the assertion that it was invalid due to ODP over two related patents, U.S. Patent Nos. 8,344,011 (the '011 patent) and 8,609,709 (the '709 patent). The district court initially ruled in favor of invalidity, determining that because the '356 patent expired after the '011 and '709 patents—despite sharing a common priority ... Read More ›

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including ... Read More ›

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a ... Read More ›

In an Inter Partes Review (IPR), the burden of proof and persuasion lies with the petitioner to demonstrate "unpatentability by a preponderance of the evidence" under 35 U.S.C. § 316(e). “[T]hat burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Accordingly, to invalidate a claim in an IPR, the petitioner must establish by a preponderance of the evidence, that a claim in a patent is unpatentable.

To prove that a claim is unpatentable for violating “obviousness” requirements under 35 U.S.C §103, a ... Read More ›

The Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act, was enacted in 1980 as a United States federal law. Its purpose is to establish a framework for the ownership and commercialization of intellectual property that arises from research and development (R&D) activities funded by the federal government.

Prior to the enactment of the Bayh-Dole Act, the U.S. government retained ownership of inventions resulting from federally funded research. However, this approach often led to the underutilization of these inventions, as the government lacked the ... Read More ›

Applicant-admitted prior art (“AAPA”) refers to a situation in patent applications where the person or entity applying for a patent acknowledges the existence of prior art relevant to their invention. When an applicant admits prior art, they are essentially acknowledging that the invention they are seeking to patent is not entirely new or novel. By admitting the existence of prior art, the Applicant is disclosing that similar or related technologies or inventions already exist, which could potentially impact the patentability of their own invention.

In the United States ... Read More ›

In Sanofi-Aventis Deutschland GMBH v. Mylan Pharmaceuticals Inc., No. 2021-1981, 2023 U.S. App. LEXIS 11311 (Fed. Cir. 2023), the Federal Circuit reversed a decision by the Patent Trial and Appeal Board (“PTAB”) that found all challenged claims of U.S. Patent No. RE47,614 (“the ‘614 patent”) unpatentable in Inter Partes Review (IPR) IPR2019-01657. The Petitioner (Mylan) argued that the combination of three prior art references rendered the claims obvious. In attempting to sustain its burden of establishing obviousness, Mylan appears to have attempted to apply the ... Read More ›

In last week’s precedential decision in HIP, Inc. v. Hormel Foods Corp, the Federal Circuit reversed a decision by the District Court of Delaware holding that an inventor, David Howard, should be added as a joint inventor on U.S. Patent 9,980,498 (“’498 Patent”). The Federal Circuit reasoned that the inventor failed to satisfy the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344,1351, because his contribution to the claims of the ‘498 Patent was “insignificant in quality.” HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 U.S. App. LEXIS ... Read More ›

Last week’s non-precedential decision by the Federal Circuit Court of Appeals in Cioffi v. Google LLC, No. 2018-1049, 2023 U.S. App. LEXIS 9142 (Fed. Cir. Apr. 18, 2023) serves as a warning for both holders of reissue patents and patent owners considering filing a reissue. The Court held that the “original patent” requirement is the standard for support in the specification for claims in a reissued patent under 35 U.S.C. §251. In order for a claim to be supported under the original patent requirement, there must be an express disclosure of the exact embodiment claimed on reissue ... Read More ›

Earlier this week, the Federal Circuit issued an opinion in Sequoia Technology LLC v. Dell Inc. et al. that underscores the importance of intrinsic evidence when construing claim language in a District Court litigation. Of particular importance are the Court’s statements regarding the patent specification’s provision of an “express purpose of the invention” and a “preferred embodiment,” as well as the Court’s reliance on statements made by the Patent Owner in its pre-institution filings and on a document cited in an Information Disclosure Statement (IDS) during ... Read More ›

In Salazar v. AT&T Mobility LLC, the Federal Circuit found that a claim reciting "a microprocesser" that performed several functions was not infringed by a system where the claimed functions were distributed among multiple microprocessors. The Court reasoned that “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”  Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376, 2023 U.S. App. LEXIS 8071, at *15 (Fed. Cir. Apr. 5, 2023). 

The claim in Salazar recited:

1. A communications ...

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and ... Read More ›

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how ... Read More ›

Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242.  In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous ... Read More ›

The Director of the USPTO, Kathi Vidal, issued a decision this week raising the likelihood that the Patent Trials and Appeals Board (PTAB) will exercise its discretion to deny the institution of Inter Partes Review (IPR) challenges. Last June, Vidal issued guidance on the discretionary denial standard, which was widely interpreted to be the death knell for discretionary denials. The Director’s decision this week will undoubtedly change that view. It appears that the prospects for discretionary denial are alive and well at the PTAB.

In  COMMSCOPE TECHNOLOGIES LLC, v DALI ... Read More ›

One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation. Although there are similarities between these types of proceedings, as IPR/PGR proceedings are also adversarial between the petitioner (i.e., the patent challenger) and the patent owner, there are important differences between the two. Besides the differences in legal ... Read More ›

Discussing the technical advantages of an invention, a standard practice in many jurisdictions such as before the European Patent Office, has long been disfavored in the US.  However, recent Federal Circuit case law suggests that there may be significant value to be gained by discussing the advantages of the claimed invention in the context of the prior art in order to establish patent eligibility under 35 U.S.C. §101.

In the recent Federal Circuit Court of Appeals case of Cooperative Entertainment, Inc. v. Kollective Tech, Inc., the Court reaffirmed the importance of the ... Read More ›

The April 16^th, 2022, New York Times editorial entitled “Save America’s Patent System” recommends that the US Patent and Trademark Office (USPTO) be improved through collaboration with other agencies such as the Food and Drug Administration (FDA). The editorial identified that “[e]xisting regulations allow medical device makers to sidestep burdensome regulatory approvals if their newer products are deemed similar to ones that already exist.”

However, the editorial board of the New York Times recognized that the lack of collaboration between the FDA and the USPTO ... Read More ›