Skip to Content

Turning the Tide: Patent Subject Matter Eligibility at the Federal Circuit

Recent decisions from the United States Court of Appeals for the Federal Circuit from 2016 and 2017 suggest a loosening grip and increasing flexibility of the two-part Mayo/Alice framework that has dominated the question of patent subject matter eligibility under 35 U.S.C. § 101. In fact, in 2014 after the Alice decision, just one Federal Circuit case addressing 101 challenges was ruled to have eligible claims. Although there were no 101 eligibility affirmations in 2015, there were five such cases in 2016 alone. Fewer than five months into 2017, there have now already been two 101 decisions from the Federal Circuit finding patent eligible claims (see Figure 1 and Table 1).

Upcoming Free Webinar from Dilworth IP: Laying Your Claim: Best Practices for Patent Claim Construction in a Post-Teva World

William Reid, Partner at Dilworth IP, will be presenting a free webinar on Wednesday, June 14th at 1:00 PM EDT entitled, “Laying Your Claim: Best Practices for Patent Claim Construction in a Post-Teva World.” The interpretation of a patent claim’s meaning is fundamental to the scope of its coverage and, thus, is a pivotal consideration when drafting and prosecuting an application or when assessing infringement. This webinar will summarize current law with respect to claim construction in the post Nautilus, Inc. v. Biosig Instruments, Inc. and Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. world. Patent practitioners will be armed with current best practices and advice regarding claim construction for their use when drafting patent applications, writing patent infringement opinions, or litigating a case.

To register for this free webinar, Click Here

Supreme Court Provides Unanimous Ruling on Patent Litigation Venue Case

On Monday May 22, the Supreme Court ruled on the much-anticipated decision in TC Heartland v. Kraft Foods, a case that many viewed as having the potential to upend the question of patent venue in patent litigation. In a unanimous decision (8-0, Justice Gorsuch took no part in this case), the Court ruled in favor of TC Heartland, stating that, “a domestic corporation “resides” only in its State of incorporation for purposes of the patent venue statute.”

Fluid Catalytic Cracking Patents – 2016, Part III: Light Olefins Production

Conventional techniques available to refiners having FCC units for increasing light olefin production (not employing significant capital expense), have included: (1) catalyst approaches, such as reducing the unit cell size of the Y-zeolite used, or employing octane additives to crack naphtha range material to light olefins; (2) modifying operating conditions to drive conversion levels up and increase olefinicities; and (3) combining hardware modifications and alternative feedstocks. This last option includes processing large amounts/quantities of Light Straight-Run Naphtha (LSN), Light Coke Naphtha (LCN) and Natural Gas Condensate (Liquid – NGL). Some new technologies are also available, however, due to the heat-balance constraints imposed by the processing of large quantities of light feedstocks, changes to the process and to hardware have been necessitated. To date, there have only been a very few of these units built and operated and the others are still in the R&D stage as there are still considerable issues with their development that need to be sorted-out/worked through.

Nanomedicine: A Vast Horizon on a Molecular Landscape – Part X, Magnetic Nanoparticles theranostics II

Magnetic nanoparticles are superior imaging contrast agents for Magnetic Resonance Imaging (MRI) due to the intrinsic magnetic properties of nanoparticles. As of 2012, the FDA has approved several MNPs as MRI contrast agents or therapeutic agents: ferumoxides (also known as Feridex in the USA) as an MRI contrast agent for imaging liver lesions; ferucarbotran (also known as Resovist) as MRI contrast agent for imaging liver lesions; ferumoxsil (also known as GastroMARK or Lumirem) as an orally administered MRI contrast agent; and ferumoxytol (also known as Feraheme) as an intravenously administered nanoparticle to treat iron deficiency in adults with chronic kidney disease.

The IP Manager’s Playbook: Leveraging the Tools of the USPTO, Part II – Track One – When There is a Need for Speed

This is the second article in a series related to programs initiated by the Patent Office to assist patent practitioners; for part one in this series, Awaiting the Return of P3, Click Here. This article discusses the Track One program. Track One is one of three programs directed to expediting the front end of patent prosecution. Besides Track One, the other programs include the patent prosecution highway and Accelerated Examination. The value of these programs is evident when one considers that total prosecution time is dominated by the time waiting to receive an Office Action. In fact, this time amounts to over 60% of the total prosecution time. So, any effort to reduce overall patent prosecution time must affect the time awaiting the first office action. Track One addresses this. The saved time translates to earlier issue dates, which can aid the client in terms of licensing opportunities, or in blocking the patent applications of the client’s competitors, and potentially reduce prosecution costs.

Obviousness and the Patent Office’s Burden to Explain

After her strange trip down the rabbit hole, we might all be willing to cut Alice some slack for being confused in her response to the Caterpillar’s demand, “Explain yourself!” Lately, however, the Federal Circuit has become increasingly strict with the USPTO Board and examiners when they fail to explain adequately the basis for an obviousness ruling. In fact, a splash of recent decisions makes me wonder if this is mere ripple in Section 103 jurisprudence or a welcome wave of change.

Dilworth IP’s Frederick Spaeth to Present at the 33rd Annual Joint Patent Practice Seminar

Frederick Spaeth, Partner at Dilworth IP, will be speaking at the 33rd Annual Joint Patent Practice Seminar which will take place at the Crowne Plaza Times Square in New York on Thursday, April 27th. The annual event is hosted by the Joint Patent Practice Continuing Legal Education (JPPCLE), as a one-day seminar of featured speakers who offer comprehensive presentations on various recent developments in patent law; including case law, legislation, and various regulations. Among the featured speakers this year are the Honorable Richard Linn, Senior Circuit Judge of the US Court of Appeals for the Federal Circuit, and Andrew Hirshfeld, Commissioner for Patents for the USPTO. Fred’s talk will focus on the 2016 federal circuit decision Micrografx v. Google, Inc. illustrating the difficulty in obtaining a reversal of PTAB decisions.

Varsity Brands Prevails 6-2 Over Star Athletica In Battle Of The Uniforms

Late last month, the Supreme Court decided an interesting case at the very cusp of what constitutes a copyright-eligible design as opposed to an ineligible article of manufacture. See Star Athletica, LLC v. Varsity Brands, Inc. (No. 15-866). In 2010, the cheerleading clothing outfit behemoth Varsity Brands claimed that a competitor, Star Athletica, copied several of its cheerleading outfit designs (e.g., chevrons, stripes, etc.) and sued Star for copyright infringement under 17 U.S.C. §101 of The Copyright Act of 1976. The Act mandates that “the design of a useful article” is eligible for copyright if “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”1 This aspect of the Act is commonly referred to as the “separate – identification and independent – existence” requirement or, put simply, the “Separability Test”. Varsity argued that since cheerleading uniforms (“the useful article”) could either contain or lack superficial designs, the designs themselves are in fact separate graphic works that make uniforms unique and are therefore subject to copyright protection. Counter to this position, Star claimed that the designs on a cheerleading uniform are inherent to the uniform and are not stand-alone, separate design elements.

Enhanced Oil Recovery Patents – 2016 (Part 2) Radiation-Assisted Oil Recovery

Enhanced oil recovery techniques can loosely be grouped into methods conducted at ambient temperatures and those at high temperature. Ambient temperature methods include techniques using water flooding, solvent or surfactant injection, and cold heavy oil production with sand (CHOPS). High-temperature techniques function by heating recoverable material in the reservoir to lower its viscosity and improve flowability. Such techniques typically use steam, i.e., steam injection in various ways, although radiation assisted oil recovery would also fall into this group. However, while conventional heat treatments using steam are effective, they can sometimes result in a wastewater stream that is not desirable. While radiation techniques may additionally utilize other injectable streams, they need not rely on a separate heat-input stream to transfer heat, so typically don’t generate the wastewater streams characteristic of steam injection.