Tug Toy Survives §101 Challenge on Motion to Dismiss

FYF-JB, LLC sued Pet Factory for allegedly infringing its tug-toy patent.  Pet Factory responded with a motion to dismiss, arguing that the asserted claims are not patent eligible, and further, noncompliant with 35 USC §112.  FYF-JB v Pet Factory In particular, FYF-JB’s tug-toy patent (US 9,681,643) describes that a need existed in the art for […]

Wherein clauses are limiting on their face, more so if the specification and prosecution history support that they are material to patentability

USPTO requests comments on patenting AI inventions

In 84 FR 44889, the USPTO has requested comments on issues related to patenting inventions related to artificial intelligence.  Although the PTO states that any comments believed to be relevant are welcome, the Notice poses 12 questions in which the PTO is particular interested in answers.  Comments must be received on or before October 11, […]

Multiple components from the prior art cannot be pieced together to provide the structure and function of one claim recitation

I see this a fair amount, and actually just prepared a response last week where the Examiner had so construed a reference, and so this decision caught my eye. In Ex parte de Ceuster, the Examiner had combined two components of the prior art, a masking layer 2 and insulating layer 20, in order to […]

The broadest reasonable interpretation cannot in fact, be unreasonable.

Or, “Here, the something is a potato” In Ex Parte Barber, the Board reversed the Examiner on all grounds, and on one in particular, held that the Examiner’s broadest reasonable interpretation of the claim recitation “potato slice”, was unreasonable.  Specifically, the Examiner had construed a teaching of a dough that included potato flour, that was […]

Claims directed to method of detecting a mutation in dog DNA held patent ineligible under §101

On August 9, 2019, the US Court of Appeals for the Federal Circuit so held.  The patent covered ways to genotype Labrador Retrievers for the presence of a mutation in the SUV39H2 gene associated with Hereditary Nasal Parakeratosis (HNPK).  The invalidated claims were directed to methods of genotyping and required only obtaining a biological sample, […]

Similarity of purpose not enough to establish motivation to combine

In William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, Petitioner filed a Petition for inter partes review of US Pat. No. 8784542, in which each independent claim was directed to a shale-gas separator and each prior art reference was directed to an apparatus for treating drilling mud. In their obviousness analysis, PTAB […]

Federal Circuit vacates and remands to PTAB with instructions to “address the relevant factors…under the proper legal standard”

Or, “Things that should never have to be said” In In re Global IP Holdings, LLC, Fed. Cir., No. 2018-1426, July 5, 2019, the Federal Circuit so held/said, after the Examiner and PTAB maintained the position held to be without legal basis for over 4 years. See, USSN 14/632238, the reissue application of US Patent […]

PTA Determinations after 84 F.R. 20343/Supernus

On May 9, 2019, the USPTO issued a notice concerning its patent term adjustment procedures in light of the Federal Circuit’s decision in Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). Although the notice states that the USPTO would be modifying its procedures in light of Supernus, it is not, doing so. […]