Dismissal and covenant not to sue for past acts divests court of jurisdiction In a case decided today, the Federal Circuit affirmed a district court's dismissal of a patent infringement defendant's counterclaim for invalidity for lack of subject matter jurisdiction. The patent holder voluntarily dismissed its claims for infringement and agreed not to sue for acts occurring before the dismissal, and there was an insufficiently "immediate" controversy between […] Continue Reading →
Ex parte Catan: Obviousness at the USPTO in electrical engineering In its third opinion of the day designated precedential, the Board of Patent Appeals and Interferences once again affirmed an examiner's obviousness rejections. Specifically, the Board found that Appellant's apparatus incorporating bioauthentication and a consumer electronics device was an obvious solution to a known problem, as all elements of the claims other than the bioauthentication […] Continue Reading →
Patent Reform Act of 2007: moving forward? Today the House Judiciary Committee sent the Patent Reform Act of 2007 (H.R. 1908 and S. 1145) out of committee to the full House of Representatives for consideration. The amended version (found here, as it has not been updated on the Library of Congress site yet). The controversial damages apportionment provisions are still present in […] Continue Reading →
Ex parte Smith: Obviousness at the USPTO in mechanical engineering In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to […] Continue Reading →
Ex parte Kubin: Obviousness at the USPTO in biotechnology As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous […] Continue Reading →
Board of Patent Appeals and Interferences releases three precedential obviousness decisions Today the USPTO Board of Patent Appeals and Interferences designated as precedential three opinions in ex parte appeals from examiner rejections applying the post-KSR obviousness standard. The three cases are each from a different technology center. The cases are: Ex parte Kubin (Tech center 1600—Biotechnology and Organic Chemistry) Ex parte Smith (Tech center 3700—Mechanical Engineering, […] Continue Reading →
Federal Circuit affirms dismissal of opposition proceeding for lack of standing In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark. There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for […] Continue Reading →
Determination of level of ordinary skill in the art erroneous, leads to finding of obviousness In a nonprecedential ruling today, the Federal Circuit held that the district court incorrectly determined the level of ordinary skill in the art, and that when the level of skill was determined correctly, the invention was obvious based on a prior art reference that was directed toward those having greater skill than the district court […] Continue Reading →
Verifying what was already suspected to be the case “does not give rise to a patentable invention” The Federal Circuit yesterday issued a split opinion dealing with contributory infringement and post-KSR obviousness. The case involved two patents regarding hematopoietic stem cells collected from blood in the umbilical cord after the birth of a child. Such cells have shown promise in the treatment of blood-related disorders. The Federal Circuit held that the patents […] Continue Reading →
Office of Management and Budget approves USPTO’s new continuation rules The Office of Management and Budget has approved the two new rules promulgated by the USPTO relating to continuation applications and examination of claims. Apparently the meetings with various groups did not convince the OMB that the rules were inconsistent with the USPTO's regulatory authority. The rules are rumored to be different than those originally […] Continue Reading →