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Yesterday, Tues., Mar. 20, 2012, in Mayo Collaborative Svcs v. Prometheus Labs, No. 10-1150, the Supreme Court (Breyer) unanimously reversed the Federal Circuit and ruled that a claimed process for assessing proper drug dosage was unpatentable under Section 101 because it was broadly directed to simply applying a law of nature in otherwise conventional drug treatment procedures.  This decision may significantly impact not only pharmaceuticals, but software or other technology that involve applying laws of nature or mathematical formulas.
Continue Reading Patent Alert: Supreme Court rules drug administration process unpatentable because it simply applied law of nature to otherwise conventional drug treatment procedures (Mayo v. Prometheus)

Today, Thu., Mar. 15, 2012, in Marine Polymer v. Hemcon, No. 2010-1548, the Federal Circuit en banc (Opinion by Lourie; Dissent by Dyk) in a split decision ruled that intervening rights do not arise for claims that were not amended or added in reexamination even if arguments during reexamination changed the claim scope.  The Majority ruled that the first step in assessing intervening rights is to determine whether claims were amended or added in reexamination.  If not, then the court should not proceed to the second step of determining whether there were substantive changes to claim scope.
Continue Reading Patent Alert: Split en banc Federal Circuit rules no intervening rights for reexamined claims not amended/new (Marine Polymer v. Hemcon)

Today, Wed., Mar. 14, 2012, in Aspex Eyewear v. Marchon Eyewear, No. 2011-1147, the Federal Circuit (Rader, Bryson and Reyna) ruled that res judicata barred a patent owner from asserting new and amended claims issued from reexamination against products that were found not to infringe the original patent.  The Court also ruled that a patent owner may include new products in a pending litigation, but is not required to do so.  Issue preclusion, however, may apply to those new products in a following action.
Continue Reading Patent Alert: Federal Circuit rules res judicata bars action on claims amended or added in reexam (Aspex Eyewear v. Marchon Eyewear)

On Wed., Mar. 7, 2012, in Digital Vending v. Univ. of Phoenix, No. 2011-1216, the Federal Circuit (Rader, Linn and Moore (dissent-in-part)) issued a split decision on whether there had been a clear disavowal of claim scope.  Judge Moore concluded that “[i]t is difficult to imagine a clearer case of disavowal.”  The Majority, however, found that “the careful distinctions in specification descriptions avoid any hint that the inventors clearly disavowed claim scope with respect to the method claims.”
Continue Reading Patent Alert: Federal Circuit split on claim scope disavowal (Digital Vending v. Univ. Phoenix)

Today, Mon., Mar. 5, 2012, in In re Staats, No. 2010-1443, the Federal Circuit (Dyk, O’Malley (concur) and Reyna) reversed the Patent Office and ruled that a continuing reissue application filed after the 2-year period for seeking broadened reissue was proper because it related to a prior broadening reissue application filed within the 2-year period.  This was the case even though the continuing reissue application sought for the first time to cover a second embodiment in the patent and the prior broadening reissue application was directed only to a first embodiment.
Continue Reading Patent Alert: Federal Circuit permits continuing reissue application if related broadening reissue application filed within 2-year period of original patent grant (In re Staats)

Today, Fri., Mar. 2, 2012, in MySpace v. Graphon, No. 2011-1149, the Federal Circuit (Newman, Mayer (dissenting) and Plager) affirmed summary judgment that patent claims directed to accessing a database over a network were invalid as anticipated or obvious over the prior art.
Continue Reading Patent Alert: Federal Circuit decides classic invalidity defenses to avoid abstract patentable subject matter defense (MySpace v. Graphon)

Today, Mon., Feb. 27, 2012, in Fort Properties v. American Master Lease, No. 2009-1242, the Federal Circuit (Prost, Schall and Moore) affirmed summary judgment invalidating as unpatentable subject matter claims directed to a real property investment tool.  This case provides a good summary of the current state of the law on patentable…

On Wed., Feb. 1, 2012, in Thorner v. Sony Computer, No. 2011-1114, the Federal Circuit (Rader, Moore and Aiken) reversed a claim construction because the district court improperly used the specification to limit claim terms.
Continue Reading Patent Alert: Federal Circuit provides insight on claim disavowal and rules that claims raising questions of degree are factual infringement issues (Thorner v. Sony Computer)