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Dr. Jonathan L. Schuchardt of Dilworth IP will present a FREE webinar on Wednesday, March 22nd at 1:00 p.m. EST. This installment in the Dilworth IP Webinar Series is entitled “Not so Obvious: How the Federal Circuit is Interpreting Section 103.” Since the US Supreme Court decided KSR v. Teleflex, Section 103 law has continued to evolve as courts struggle to understand the proper role of “common sense,” predictability, “teaching away,” and motivation to combine reference teachings. Practitioners know all too well about Section 103 rejections that are conclusory and devoid of a rationale for why a combination of references renders a claim obvious. In recent developments, the CAFC has reversed or remanded cases in which a district court or the USPTO Patent Trial and Appeal Board (PTAB) failed to adequately explain why a skilled person was motivated to combine references. Is this a mere ripple in the court’s jurisprudence or a welcome wave of change?

Dilworth IP’s Microbiome series, “The Emergent Microbiome: A Revolution for the Life Sciences,” was recently featured in an article recognizing David Puleo, Dilworth IP contributor and Yale doctoral candidate, by the Yale Graduate School of Arts and Sciences (GSAS). Dilworth IP Partner, Dr. Anthony Sabatelli, was also mentioned as a co-author of the Microbiome piece which enjoyed broad circulation online, including PatentDocs, a major biotechnology and pharmaceutical patent blog. Click here to read the article published about Mr. Puleo on the Yale GSAS news site.

Dilworth IP is a sponsor of the 2017 Yale Healthcare Case Competition which is being presented by the Jackson Laboratories this Saturday, February 25th in Evans Hall at the Yale School of Business. The competition will present teams of students with a live case in the area of new delivery methods in immunotherapy, which they will have to review, and present recommendations on to a panel of judges. Dilworth IP’s Dr. Anthony Sabatelli will serve on the panel as a judge. More information regarding the event can be found here.

Last week, the United States Patent and Trademark Office’s (USPTO) Patent and Trademark Appeal Board (PTAB) handed down its decision in the contentious CRISPR patent battle between UC Berkeley and the Broad Institute. Somewhat unsurprisingly, the PTAB ruled that there existed no interference-in-fact between the patents and patent applications held by the Broad Institute and those held by UC Berkeley. In short, the PTAB was looking to whether the Broad Institute claims and the UC Berkeley claims were overlapping and if so, would have determined which party had first made the invention. The PTAB clearly stated there exists no overlap, or interference-in-fact, meaning that each institution will be allowed to license and assert its patents as it wishes, granting a victory to the Broad Institute in what has evolved into an extended, and at times, a bitter CRISPR patent battle.

Dr. Anthony Sabatelli, Partner at Dilworth IP, will be co-hosting the CURE Legislative Briefing entitled “Biotech Drug Discovery: Innovation, Process and Talent” on Thursday, February 23rd from 10:00 AM to 11:00 AM at the Connecticut State Capitol in Hartford. The event will gather members of the Connecticut bioscience community and of Connecticut’s General Assembly for a discussion on the research and innovation involved in drug discovery; Connecticut Governor Dannel Malloy will be presenting the opening remarks.

On December 2016, another CAR-T patent fight temporarily came to the end by the issuing of the final written decision from the Patent Trial and Appeal Board (PTAB) (IPR2015-01719). This Inter Partes Review (IPR) was initiated by Kite Pharma Inc. (“Kite”) to challenge a patent held by Memorial Sloan Kettering Cancer Center (MSKCC), relating to chimeric antigen receptors (CAR) T-cells for cancer immunotherapy (US 7,446,190). The IPR petition was filed on August 2015 and granted by the US PTAB on February 2016. After review, the PTAB determined that Kite did not show by a preponderance of the evidence that all the claims in the ‘190 patent are unpatentable.

The USPTO has expanded its practice of testing the veracity of post-registration Declarations of Use under a program intended to improve accuracy and integrity of the trademark register, under a new rule which goes into effect Feb. 17, 2017. The rule formalizes a small-scale trial program in effect since 2012.

Under the new rule, the USPTO may respond to the filing of a Declaration of Use by requiring additional proof of use of the mark in connection with the goods/services identified in the registration. The additional proof may be provided in the form of information, exhibits, affidavits or declarations, and specimens of use. A registrant who cannot produce the additional proof of use for particular goods/services, or an acceptable claim of excusable nonuse, will be advised to cancel those goods/services from the registration as well as any others no longer being offered under the mark.

The Board of Directors of the Connecticut China Council has elected Michael Dilworth, Founder and Managing Partner of Dilworth IP, to join its ranks. The Council was founded in 1989 after then Governor William O’Neill signed a sister state agreement with Shandong Province in order to help the state of Connecticut to foster and promote relations with Shandong Providence. Since then, the Council has hosted delegations from China, established a sister school relationship between Connecticut high schools and Shandong Province middle schools, and helped to form the Connecticut China Scholars Program. In 2012 the sister state agreement was enhanced by Governor Dannell Malloy’s official visit to Shandong Province, and the Council has since expanded its mission to include serving as a forum for Connecticut businesses doing business with China. Michael commented, “it is a great honor to join the Council’s Board of Directors; China’s industry is growing rapidly, and I am excited to work with the other members in their continued effort to develop the relationship between our state and Shandong Province.”

Research into the human microbiome has resulted in such unprecedented amounts of data that challenges related to both interpretation and management have emerged. Somewhat paradoxically, current statistical methods have made it such that it is more difficult and less likely to identify statistically significant results from large data sets. We see much potential for the expansion of intellectual property protection in the area of big data related to the microbiome, not only as a result of recent research advances and the desire to better and more efficiently handle big data, but also because of several recent Federal Circuit decisions in intellectual property law that provide some promising guidance for protecting software and computing information that may be required for managing and interpreting microbiome-related data. Moreover, the United States Patent and Trademark Office (USPTO) has provided examples for crafting potentially patent eligible claims in this space, a promising step forward in what has become a difficult area for IP protection.

In late December, the United States Patent and Trademark Office (USPTO) released a series of subject matter eligibility examples meant to provide guidance for drafting claims pertaining to business methods. This is the first time that the USPTO has issued guidance on such matters. The examples, labeled 34, 35, and 36, serve to clarify the validity of claims pertaining to abstract matters under 35 U.S.C. § 101 and focus on a system for filtering internet content, verifying a bank customer’s identity to permit an ATM transaction, and tracking inventory, respectively. Interestingly, while the fact patterns and claims of 35 and 36 are hypothetical, example 34 is taken directly from BASCOM Global Internet v. AT&T Mobility LLC where the claims were ruled eligible by the Federal Circuit in 2016. BASCOM has played an important role in the changing landscape of software-related patents.