1. Be Specific: Further Thoughts from Two-Way Media to Avoid a 101 Misstep

    Posted on 30.01.18 Michael Hinrichsen, on Articles, Patent Related Court Rulings, Patent Trends & Activity

    Developments on the topic of patent subject matter ineligibility continue to progress rapidly.  In this piece we revisit the Federal Circuit Court decision in Two-Way Media v. Comcast.  This case provides comments in part on the role the patent specification should play when looking for inventive concepts in the second step of the Alice/Mayo test.  Two-Way also serves as an important reminder to patent professionals to avoid conflation of the § 101 subject matter eligibility inquiry with § 102 and § 103 novelty and obviousness considerations.

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  2. Dilworth IP’s David Puleo & Dr. Anthony Sabatelli Featured in the IP Litigator

    Posted on 11.01.18 Thomas Pia, on Announcements, Patent Related Court Rulings, Recent News & Articles

    Dilworth IP’s David Puleo and Dr. Anthony Sabatelli recently had an article featured in the bi-monthly publication IP Litigator. Their article, entitled “UK Supreme Court Redefines Patent Infringement,” considers the United Kingdom Supreme Court decision in Actavis UK Limited and others v. Eli Lilly and Company, and the implications it has on defining patent infringement.

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  3. Diagnosing Patent Subject Matter Eligibility

    Posted on 14.12.17 John Wizeman, on Articles, Patent Related Court Rulings, Patent Trends & Activity

    Clarity on patent subject matter eligibility is still being sought five years after Mayo[1] and three years after Alice[2]. Further adding to the confusion is the fact that discoveries in diagnostics, despite their apparent importance to the biomedical sciences, have been repeatedly determined as ineligible subject matter under 35 USC § 101. The two step Alice/Mayo test has increased the percentage of invalid patents, and the decision by the Supreme Court to deny certiorari in the case of Ariosa vs. Sequenom[3] in 2016 means we are unlikely to see a reversal of this trend in the near future. Inventors are still finding it challenging to implement the current guidelines toward a successful diagnostics patent grant.  In this piece we provide perspective from a 2016 Federal Circuit decision that provides some over-looked hints for moving forward with inventions relating to diagnostics.

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  4. Federal Circuit Further Clarifies Inventive Concept Under The Two-Part Mayo/Alice Test

    Posted on 12.12.17 David Puleo, on Articles, Patent Related Court Rulings, Recent News & Articles

    In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the decision of the District Court of Delaware that the Two-Way Media patents and claims were ineligible under 35 U.S.C. § 101.  See the Federal Circuit decision here.  Two-Way sued Comcast, alleging that Comcast violated U.S. Patent Nos. 5,778,187 (‘187); 5,983,005 (‘005); 6,434,622 (‘622); and 7,266,686 (‘686) relating to a “Multicasting method and apparatus”.  These patents are directed to a “scalable architecture … or delivery of real-time information over a communications network”.  This essentially refers to methods for streaming data over the internet to multiple users at a time.  The outcome of this case teaches important lessons on how and where to define inventive concept under the two-part Mayo/Alice test.

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  5. Navigating the Patent Eligibility Turnstile

    Posted on 21.11.17 Michael Hinrichsen, on Patent Related Court Rulings, Patent Trends & Activity, Recent News & Articles

    On October 18, the CAFC Circuit Court delivered a verdict in Smart Sys. Innov. v Chicago Trans. Auth. that adds an interesting new wrinkle for determining the question of patent subject matter eligibility.  In a split decision, the court ruled that several contested patents held by SSI were directed to an abstract idea following the Mayo/Alice test for determining patent eligibility, and were therefore invalid.  The dissenting opinion, penned by Judge Linn, offered an interesting, and in our opinion, reasonable, new interpretation for the Mayo/Alice test for determining patent eligibility.

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  6. Keeping Score: Over 50 Briefs for Upcoming IPR Case in the Supreme Court

    Posted on 16.11.17 Shin Hee Lee, on Articles, Patent Related Court Rulings, Recent News & Articles

    We are fast approaching the Supreme Court oral arguments in the case of Oil States Energy Services LLC v. Greene’s Energy group on Monday, November 27th. We had previously reported on this case in a recent piece, Oil Battles Greene Energy to War over Inter Partes Review in the Supreme Court.  A whopping 57 amicus curiae briefs have been filed, underscoring the intense interest in the outcome of this case.  The briefs represent a vast array of interested parties, including law professors, legal associations, small businesses, and recognized companies in the fields of medicine, electronics, automobiles, and technology. The key issue of the case is simple – whether the Patent Office’s inter partes review (IPR) process is an unconstitutional denial of the right to a jury trial.

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  7. Oil Battles Greene Energy to War Over Inter Partes Review in the Supreme Court

    Posted on 17.10.17 Shin Hee Lee, on Articles, Patent Related Court Rulings, Patent Trends & Activity

    Here is a case on the Supreme Court docket that could become a landmark decision for the patent community. Oil States Energy Services LLC v. Greene’s Energy Group is the first time the Court has agreed to review the constitutionality of inter partes review (IPR). Over thirty amicus curiae briefs have been filed in this high-profile case that could greatly impact patent infringement and litigation practices. The Court granted a writ of certiorari[1] to Oil States on June 12, 2017, and has set a date for argument next month on November 27. As we look forward to the decision, we review here the critical details of the case.

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  8. Patent Exhaustion and Pharmaceuticals

    Posted on 22.08.17 Michael Hinrichsen, on Articles, Biotech/Pharma, Patent Related Court Rulings

    On May 30th, the Supreme Court ruled in Impression Products, Inc. v. Lexmark International, Inc. that all patent rights are automatically exhausted upon the sale of a product irrespective of contract stipulations and regardless of whether the sale is made domestically or internationally. While the dispute in this case involved articles of manufacture, the decision has strong implications for the biotechnology and pharmaceutical Industry, and may make it easier for drugs sold legally overseas to make their way back to the US market.

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  9. UK Supreme Court Redefines Patent Infringement

    Posted on 11.08.17 David Puleo, on Articles, Patent Related Court Rulings

    Although the focus of most of our pieces has been on U.S. patent law, there is occasion to report on developments of note from abroad.  One such patent case decided last month in Great Britain deserves our attention.  On July 12th, the United Kingdom Supreme Court (UKSC) redefined patent infringement laws as related to infringement by equivalents, i.e. under what we know here in the U.S. as the “Doctrine of Equivalents”.  To elaborate, under this doctrine, a party can be found liable for patent infringement even though the accused item or process does not fall within the literal scope of a patent claim.  The current legal test in the U.S. determines whether the difference between the accused item or process and the patent claim is “insubstantial” so that it is equivalent to an invention falling within the scope of the claim.  See Warner-Jenkinson Co. v. Hilton Davis Chem. Co. (1997).  Although well established in the U.S., the doctrine has been anathema under U.K. law.

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  10. Strong Nonobviousness Push-Back to the District Court for the District of Delaware Millennium Pharmaceuticals, Inc. v. Sandoz Inc.

    Posted on 28.07.17 William Reid, on Articles, Patent Related Court Rulings

    In Millenium Pharmaceuticals Inc., v. Sandoz Inc., 2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1283, 2016-1762 (Fed. Cir. July 17, 2017), the Federal Circuit pulled no punches in overruling the Districts Court’s finding of patent invalidity for U.S. Patent No. 6,713,446 (446 Patent), exclusively licensed by Millennium.  The case related to Velcade®, used in chemotherapy for the treatment of multiple myeloma.  Such was the drug’s effectiveness that it “changed the decades-old standard of care for multiple myeloma and has saved thousands of lives.

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