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Daniel Hanson

was Senior In-House Patent Counsel for Huawei Canada and has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution. The views expressed are his own.

Photo credit: Thanks to Rod MacIvor

Recent Articles by Daniel Hanson

Saul v. Carr: The SCOTUS Social Security Decision Patent Practitioners Should Read

On April 22, 2021, the United States Supreme Court issued a decision in Carr v. Saul, which dealt with a constitutional Appointments Clause challenge to Administrative Law Judges (ALJs) under the Social Security Administration (SSA). In particular, the issue in Carr was whether claimants for disability benefits had forfeited their Appointments Clause challenges by failing to raise those constitutional challenges before the agency. The Supreme Court has now ruled that the claimants’ challenges were not forfeited. The decision favoring the claimants was unanimous, although the Court was not quite unanimous on the legal bases for the ruling. The question to be addressed in this essay is what effect, if any, Carr has on practice before the United States Patent and Trademark Office (USPTO); and in particular, whether constitutional challenges must be raised before the agency lest those challenges be forfeited.

Pardon Me, But What Is the Point of Deciding Whether or Not a Reference ‘Teaches Away’?

“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement…. The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?