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 […]

Federal Circuit holds claims for infringement under the doctrine of equivalents barred by prosecution history estoppel

Pharma Tech Solutions, Inc., Decision IT Corp., v. LifeScan, Inc., LifeScan Scotland, LTD., Johnson and Johnson, Appeal 2019-1163, decided November 22, 2019. pharma-tech-solutions-v-lifescan Procedural Background Pharma Tech Solutions, Inc. sued LifeScan, Inc. for infringement of US Patent Nos. 6,153,069 and 6,413,411, both directed to blood glucose monitoring systems. As originally presented, the claims of the […]

Tech Center 1700 PTAB Observations, October 2019

As due diligence for an appeal in a difficult case I have been prosecuting for a client, I looked through the decisions issued by PTAB out of Tech Center 1700 in October of 2019.  Here are some things I found interesting: The Board heard 80 appeals, and reversed the Examiner 24 times. In the reversals: […]

Things go from bad to worse for L’Oreal in their multifaceted litigation with Olaplex

In 2018, the Federal Circuit reversed the District Court of Delaware’s refusal to grant Liqwd a preliminary injunction against L’Oreal Liqwd v L’Oreal Preliminary Injunction.  Many reported earlier this summer on L’Oreal’s expensive loss to Olaplex in the District Court of Delaware.  (See, e.g., https://www.bloomberg.com/news/articles/2019-08-12/l-oreal-owes-startup-91-million-for-stealing-its-trade-secrets).  L’Oreal has now been dealt another blow by the Federal […]

Federal Circuit reverses PTAB’s holding that the preamble “travel trailer” was nothing more than an intended use, and not limiting

David Fought and Martin Clanton (“Appellants”, In re Fought and Clanton) are the named inventors on US Patent Application No. 13/507528 directed to a “travel trailer.”  The Examiner rejected the claim 1 under 35 USC 102(b) over a reference describing a conventional truck trailer and claim 2 under 35 USC 102(b) over a reference describing […]

Federal Circuit holds that transitional phrase “consisting essentially of” renders claim indefinite, unless the “basic and novel properties” of the invention are definite

HZNP Medicines LLC, Horizon Pharma USA Inc., v. Actavis Laboratories UT, Inc., HZNP v Horizon Pharma Appeal No. 2017-2149 et al, decided October 10, 2019 was an appeal from the District Court of New Jersey’s judgment of invalidity and noninfringement.  Amongst others, at issue was the District Court’s construction of the transitional phrase “consisting essentially […]

PTAB Designates Two Decisions Illustrating Bounds of Obviousness Rejections based upon “Design Choice”

On October 15, 2019, the PTAB designated as informative two decisions illustrating the bounds of use of “design choice” by Examiners in support of an obviousness rejection. In Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) Ex-parte-Spangler, Appellants’ claimed invention related to a featherseal incorporating two longitudinal tabs that engage with a post on […]