Posts in Courts

Normally trying to figure out what a court will do is a waste of time, particularly so when that court is the Supreme Court, which is not bound by precedent of any kind given that they are the court of last resort. Having said that, the Bilski Federal Circuit decision is of such importance and inventors and clients cannot simply stand still waiting for a decision, holding themselves up until things become clear. In trying to piece together what might happen I think we should dissect some of the patent writings of the Justices, so without further ado lets begin with Justice John Paul Stevens.

Unlike Gene I did not really plan very well. I did not have credentials and am not (yet) a member of the Court. So, I was in line with the public. A patent centric public, but the public none-the-less. My fellow line standers included: Law students headed to taking the patent bar; a Finnegan partner (made me feel a little…

At 2pm ET on November 9, 2009, Chief Justice John Roberts gaveled the session to a close announcing that the case had now been submitted. The arguments were good, and the Court was most assuredly hot, peppering both sides with question after question seeking to probe the issues. It is clear that the Supreme Court did their homework and spent no time gravitating to the weak points of the parties.

On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess.

Several years after Arrhythmia, the Federal Circuit seemingly abandoned the Freeman-Walter-Abele test. Sitting en banc in Alappat the Federal Circuit did not apply the Freeman- Walter-Abele test, rather opting for the mathematical subject matter exception.

Federal funding, typically in the form of research grants, is often used to support university research.  The Bayh-Dole Act also allows universities to retain title to invention rights in such research (referred to as “subject inventions”).  See 35 U.S.C. § 202(c)(2).  What the Federal Circuit has struggled with recently is what does “retain title” mean under Bayh-Dole, and especially where…

Determining what compounds are obvious under the doctrine of “structural similarity” can be a daunting challenge, even for those of us with a chemistry or pharmaceutical background.  Add the doctrine of “inequitable conduct” to the “structural similarity” brew, and the plot truly thickens.  But there’s enough schizophrenia about the structural differences between one prior art compound called Schmutz X and…

The recent case of In re Lister is a painful reminder of the potential for “self-inflicted wounds” under the “printed publication” bar of 35 U.S.C. § 102(b) .  Fortunately, the patent applicant in Lister was able to skirt around this “hazard” of his own making. The patent applicant, Dr. Richard Lister, was a Ph.D. clinical psychologist and an avid sportsman.  Dr. Lister had grown…

Late this evening attorneys representing Dr. Triantafyllos Tafas filed a Reply to Motion for Dismissal of Appeal and Request for Remand. In this filing Tafas points out that the decision made by USPTO Director David Kappos to withdraw the claims and continuations rules does moot the appeal, there is a difference between mooting an appeal and vacating an underlying district…

By now most are likely aware of, or rapidly becoming aware of, the fact that the United States Patent and Trademark Office has finally done the right thing and has scrapped the claims and continuations rules that have divided the patent community for the last 26 months.  It is impossible not to recognize the new and refreshing tone set by…

PRESS RELEASE: GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and…

At the beginning of August 2009 the United States Court of Appeals for the Federal Circuit issued its decision in Exergen Corp. v. Wal-Mart Stores, Inc., et al., Case Nos. 2006-1491, 2007-1180 (Fed. Cir. 2009), a decision that changed the playing field with respect to charges of inequitable conduct in patent litigation. Essentially, the Federal Circuit decided that since inequitable…

Legend has it that Zeus punished Prometheus by binding him to a rock while having his regenerating liver eaten daily by a great eagle. After the case of Prometheus Laboratories, Inc. v. Mayo Collaborative Services, we in the patent world may now be subjected to similar torture in determining when medical/drug dosage calibration methods qualify as statutory subject matter under…

The Federal Circuit, in Amgen Inc. v. F. Hoffman-La Roche Ltd, has made it clear that you had better characterize an application as a “divisional” if you want to the benefit of the “safe harbor” provided by 35 U.S.C § 121. And if you don’t, you’re going face obviousness-type double patenting problems.  The Federal Circuit in Amgen also went on…

Several weeks ago, as summer was winding down and most of us were enjoying some slow times and gearing up for back-to-school, preparing for Labor Day festivities, on vacation or studiously studying fantasy football player projections, Law.com published a very interesting piece titled Slot Opens on Federal Circuit Bench, More Vacancies to Come? The article started out by discussing how…