Federal Circuit to consider whether a separate written description requirement exists in section 112 In an en banc order Friday, the Federal Circuit announced it will rehear Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. en banc to consider whether there is a written description requirement in § 112 separate and apart from the enablement requirement. Specifically, the questions presented are: Whether 35 U.S.C. § 112, paragraph 1, contains […] Continue Reading →
Federal Circuit to hear claim and continuation rule case en banc In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules. Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at […] Continue Reading →
Bilski: No machine or transformation, no patentable method, at least for now As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter. Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101. The court, after examining the relevant Supreme Court cases on […] Continue Reading →
Bilski decided The decision is available here. It adopts the "machine-or-transformation" test for patentable subject matter. As stated by the majority: The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim […] Continue Reading →
En banc Federal Circuit scraps point of novelty test for design patent infringement In an en banc decision this morning, the Federal Circuit has unanimously held that the "point of novelty" test for design patent infringement should no longer be applied. As stated by the court: [W]e hold that the "point of novelty" test should no longer be used in the analysis of a claim of design patent […] Continue Reading →
En banc Eleventh Circuit reaffirms digital compilation of magazine archives a privileged revision In a decision last week, the Eleventh Circuit en banc addressed the application of New York Times v. Tasini in the context of a comprehensive CD archive encompassing all National Geographic magazines from 1888 to 1996, called the Complete National Geographic. In a previous decision, a panel of the Eleventh Circuit held the CNG was […] Continue Reading →
Thursday at the Federal Circuit: In re Bilski oral arguments on scope of patentable subject matter This Thursday, the Federal Circuit will hear oral arguments en banc in In re Bilski (No. 2007-1130), a case that will help define the scope of patentable subject matter. Numerous amicus briefs have been filed in the case, and perhaps most interestingly, two of the amici, Bank of America and Regulatory DataCorp, have been granted […] Continue Reading →
Federal Circuit to consider overruling State Street en banc The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101. The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental […] Continue Reading →
No en banc rehearing for case holding “signals” not patentable subject matter In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten. In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101. Judge […] Continue Reading →
Federal Circuit grants rehearing en banc in design patent case The Federal Circuit today granted a petition for rehearing en banc in a design patent case, Egyptian Goddess, Inc. v. Swisa, Inc. In that case, the court held that when a design patent's "point of novelty" is a combination of existing design elements, the point of novelty must be a "non-trivial" advance over the prior […] Continue Reading →