Genentech v. Iancu – another reminder that narrower, but valid, claims are preferable to broader, but invalid ones

Genentech v. Iancu, Appeal Nos. 2019-1263, 2019-1267, Fed. Cir., March 26, 2020. Genentech owns US Patent Nos 7,846,441 and 7,892,549, directed to the treatment of cancer with a combination of an antibody and a taxoid, without anthracycline.  The patents share a specification, and the claims of each require that the combination be administered in an amount […]

“No risk trial” is an offer for sale, and triggers the on-sale bar

And relying on the exemplary data provided with the offer as proof of reduction to practice, without disclosing the offer, is not a good idea.  GS Cleantech v Adkins Energy, No. 2016-2231 (Fed. Cir. March 2, 2020). The US District Court for the Southern District of Indiana (“District Court”) found four of Appellants patents (US […]

Federal Circuit issues two decisions providing claim construction guidance

See, Kaken Pharma v Iancu, __ F.3d __, (Fed. Cir. Mar. 13, 2020) (Newman, O’Malley, TARANTO) and Personalized Media v Apple, [2018-1936] (Fed. Cir. March 13, 2020) (Reyna, Taranto, STOLL). In Kaken, the Federal Circuit used unequivocal statements in the specification and prosecution history, upon which the Examiner relied in allowing the claims, to reverse […]

Examiner reversed, reminded that claims “must be read in accordance with the precepts of English grammar”

With a Federal Circuit citation, no less. In Ex parte Moffat, USSN 15/227,827, the claims on appeal were directed to toner compositions with white colorants.  Independent claim 1 recited, in pertinent part:  An emulsion aggregation toner having toner particles comprising … one single white colorant consisting of titanium dioxide… While claim 21, dependent from claim […]

Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art

Wait … what? This argument came up and prevailed – twice – in Tech Center 1700 PTAB decisions in November. First, Ex parte Gama, US Patent Application No 12/042641, Appeal 2019-002094, decided November 5, 2019.  In Gama, the Examiner found claims directed to a fuel filter obvious over two references.  The motivation to combine, the […]

Examiner reversed for relying on “common sense” to supply claim recitation missing from the applied art

Applicants/Appellants in the food arts, rejoice! In Ex parte Elejalde, US Patent Application Serial No. 14/119,935, Appeal 2019-003528 decided November 21, 2019 (Ex parte Elejalde), the claims recite a pan coating process using two drums.  A liquid is taught to be applied in the first drum, and a powder applied in the second such that […]

Non-Analogous Art Argument WINS!!!

Not once, not twice, but FIVE times at PTAB, Tech Center 1700, in November and December. Full disclosure – four of the decisions were issued in related applications. In Ex parte Hansen et al.,  US Patent Application Serial No. 12/345215, Appeal 2019-001796, decided November 14, 2019 Ex parte Hansen and Ex parte Hansen et al., […]

PTAB Tech Center 1700 Observations, December 2019

The was no merriment for Appellant’s in Tech Center 1700 in December.  After an almost 40% reversal rate in November, PTAB’s reversal rate in Tech Center 1700 was down to about 24% in December: The Board heard 96 appeals, and reversed the Examiner 23 times with one reversal with a new ground of rejection: No […]

Supreme Court denies cert in both Vanda and HP v. Berkhimer

Leaving the only possibility for Section 101 reform this year with Congress. Sadly, legislative reform seems unlikely this year – after much action in the summer of 2019, nothing happened.  And now, the likely champions for reform, Senators Coons and Tillis, are both up for reelection.  SCOTUS order list 13JAN2020

A cautionary tale for use of “the present invention” – Techtronic Industries, LTD v. ITC

My first thought when reading this case was doesn’t anyone else have a garage door that will not close even when there is nothing in the way?  Or that goes on psychotic ‘opening and closing’ benders for no apparent reason?  I can’t be the only one – clearly improved garage door openers are needed in […]