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HTMLFederal Circuit Invalidates Diagnostic Method Claims for Prenatal Test Under 35 U.S.C. 101
Shovon Ashraf, Terri Shieh-Newton; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.;
Legal Alert/Article
June 26, 2015, previously published on June 24, 2015
On June 12, 2015, the Federal Circuit affirmed the finding of U.S. District Court for the Northern District of California (“District Court”) that the method claims in U.S. Patent 6,258,540 (‘540 patent) for detecting paternally-inherited cell-free DNA (“cffDNA”) in...

 

HTMLPTAB Grants Fourth Motion to Amend in an IPR Proceeding
Brad M. Scheller, Anthony J. Zappin; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.;
Legal Alert/Article
June 26, 2015, previously published on June 16, 2015
For only the fourth time in its history, the Patent Trial and Appeal Board (“PTAB”) has granted a motion to amend in an inter partes review (“IPR”) proceeding, finding all substitute claims proposed by the patent owner patentable. In REG Synthetic Fuels LLC v. Neste Oil OYJ,...

 

HTMLFederal Circuit Sides with USPTO on First PTAB Appeal in In Re Cuozzo Speed Technologies, LLC
Staas Halsey LLP;
Legal Alert/Article
June 26, 2015, previously published on June 24, 2015
On February 4, 2015, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its opinion In re Cuozzo Speed Technologies, LLC, the first appeal of a U.S. Patent and Trademark Office (“USPTO”) Inter Partes Review (“IPR”) final decision....

 

HTMLFederal Circuit Overturns Patent Trial and Appeal Board Decision on Claim Construction; Ratifies Certain Requirements for Patent Owner Amendments
Gregory A. Castanias, David B. Cochran, Matthew W. Johnson; Jones Day;
Legal Alert/Article
June 26, 2015, previously published on June 2015
In a decision with important consequences for patent challenges before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB" or "Board"), the Federal Circuit, on June 17, 2015, substantially overturned the PTAB's final written decision in Microsoft Corp....

 

HTMLFed Circuit: Sequenom’s Diagnostic Method Claims Invalid Under §101
Shovon Ashraf, Terri Shieh-Newton; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.;
Legal Alert/Article
June 26, 2015, previously published on June 15, 2015
On June 12, 2015, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed the Northern District of California’s finding that the method claims in U.S. Patent 6,258,540 (‘540 patent) for detecting paternally-inherited cell-free fetal DNA (“cffDNA”) in...

 

HTMLFRAND Defense: ALJ Essex Provides an Evidence-Based Framework
Sandra J. Badin, Robert J. Moore, Michael T. Renaud; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.;
Legal Alert/Article
June 26, 2015, previously published on June 16, 2015
Administrative Law Judge Essex has made another important contribution to the ongoing conversation regarding the enforcement of standard essential patents (SEPs) at the International Trade Commission.

 

HTMLHope for Computer-Related Patents
Gregory N. Brescia, Robert P. Feinland, Jura Christine Zibas; Wilson Elser Moskowitz Edelman & Dicker LLP;
Legal Alert/Article
June 26, 2015, previously published on June 17, 2015
“Let's be clear: if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications...

 

HTMLSupreme Court Differentiates “Ultimate Question” of the Claim Construction and “Resolution of Subsidiary Factual Matters” in Teva Pharmaceuticals USA, Inc. V. Sandoz, Inc.
Staas Halsey LLP;
Legal Alert/Article
June 26, 2015, previously published on June 24, 2015
On January 20, 2015, the Supreme Court of the United States (“Supreme Court”) held that an appellate court should use a “clear error” standard of review, and not a de novo standard, when reviewing a U.S. district court’s “resolution of subsidiary factual...

 

HTMLStrategic Claim Drafting: Considerations for Potential Reduction of Pendency & Cost of Patent Prosecution
Staas Halsey LLP;
Legal Alert/Article
June 26, 2015, previously published on June 24, 2015
A patent is not enforceable until it is issued and the patent application is prosecuted during the potentially enforceable period. As a result, a reduction in application pendency can increase the value of a patent by effectively increasing the enforceability period. Patents are also expensive to...

 

HTMLSupreme Court Reviews Patent Licensing in Kimble v. Marvel Enterprises
Staas Halsey LLP;
Legal Alert/Article
June 26, 2015, previously published on June 24, 2015
The Supreme Court of the United States (“Supreme Court”) heard oral arguments in Kimble v. Marvel Enterprises in March and is expected to issue its opinion within a few months. The Justices split on whether or not to overturn the fifty-year-old precedent Brulotte v. Thys. The Brulotte...

 


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