Intellectual Property Law Blog

Up-to-date Information on Intellectual Property Law

The U.S. Supreme Court has once again been urged to revisit 35 U.S.C. § 101, the statute governing patent eligibility. Audio Evolution Diagnostics, Inc. (AED) filed a petition for writ of certiorari, challenging the Federal Circuit’s summary affirmance under Rule 36 of a ruling that invalidated its patents under the Alice/Mayo framework. Should the SCOTUS take up the case, this presents an opportunity for the Court to clarify the boundaries of patent eligibility and address concerns over the Federal Circuit’s handling of such cases.
Continue Reading Patent Eligibility: The Call for Supreme Court Clarity and for an End to Summary Affirmances

Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc., No. 23-2218 (Fed. Cir. 2025) — On January 10, 2025, the Federal Circuit reversed the district court’s opinion that claims of a Novartis patent are invalid for lack of adequate written description, but affirmed the district court’s finding that the claims were not proven invalid for lacking enablement or being obvious over the asserted prior art. The Federal Circuit emphasized that the proper analysis for enablement and written description challenges is focused on the claims and after-arising technology need not be enabled or described in the specification—even when the after-arising technology is found
Continue Reading Federal Circuit Highlights the Importance of Separating Claim Construction and Infringement Analysis When Dealing with After-Arising Technology

This case examines the application of trademark functionality doctrine in the medical device industry, specifically addressing whether the pink color of ceramic hip components can be protected as a trademark. The case provides important guidance on how courts evaluate functionality claims and the intersection between patent and trademark protection for product features.
Continue Reading Ceramtec GMBH v. Coorstek Biocermanics LLC

In Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. August 13, 2024), the Federal Circuit reversed the District Court of Delaware’s invalidity determination of certain claims of U.S. Patent No. 7,741,356 (“the ’356 patent”) for obviousness-type double patenting. The Federal Circuit also reversed the district court’s invalidity determination of certain claims of U.S. Patent Nos. 11,007,179 (“the ’179 patent”), 11,090,291 (“the ’291 patent”), 11,160,792 (“the ’792 patent”), and 11,311,516 (“the ’516 patent”) for lack of written description.
Continue Reading Federal Circuit Emphasizes Role of Filing Dates, Reversing Obviousness-Type Double Patenting Invalidation

Miller Mendel Inc. filed a lawsuit against the City of Anna, Texas (“the City”), in the U.S. District Court for the Eastern District of Texas, alleging infringement of Claims 1, 5, and 15 of U.S. Patent No. 10,043,188 (the “’188 patent”). The ’188 patent primarily pertains to a software system designed to manage pre-employment background investigation processes. Specifically, Claim 1 exemplifies a computerized method that involves: (1) receiving data related to an applicant; (2) storing new applicant information; (3) transmitting an applicant hyperlink; (4) receiving an electronic response from the applicant; (5) determining a reference class; (6) selecting a reference
Continue Reading Another Example of Ineligible Software Patent Claims

This case addresses the application of issue preclusion in relation to the validity of three patents. In particular, this case focuses on the implications of decisions made during the dismissal of pending litigations and examines whether these decisions render judgments final, justifying the application of issue preclusion to invalidate concurrently asserted patents.
Continue Reading Koss Corporation v. Bose Corporation

Inline Plastics Corp. (“Inline”) filed a lawsuit against Lacerta Group, LLC (“Lacerta”), alleging infringement of several patents related to tamper-resistant containers and methods of making such containers using thermoformed plastic. The district court granted Inline summary judgment of infringement on a subset of claims, but the jury found that the remaining asserted claims were not infringed and that all the asserted claims (including those already held infringed) were invalid. The parties then filed posttrial motions, including Inline’s motion for judgment as a matter of law and Lacerta’s motion for attorneys’ fees under 35 U.S.C. § 285, both of which were
Continue Reading Inline for a New Trial

In Copan Italia S.p.A. et al. v. Puritan Medical Products Company LLC et al., the Federal Circuit addressed the issue of whether the Federal Circuit had jurisdiction to handle an appeal based on arguments under the Pandemic Readiness and Emergency Preparedness (“PREP”) Act.
Continue Reading Federal Circuit Lacked Jurisdiction to Address Appeal Based on Arguments Under The PREP Act

In the rapidly changing world of innovation and intellectual property protection, understanding the landscape of existing patents is not merely beneficial – it’s a necessity. Patent searches stand as a fundamental step in the intellectual property lifecycle, providing a critical tool for inventors, companies, and legal professionals. This article delves into the significance of conducting thorough patent searches, considerations for timing these searches, and the methodologies employed. We also will explore the benefits and drawbacks of conducting searches internally at law firms versus outsourcing to specialized search firms, aiming to spark a discussion on the strategic use of patent searches.
Continue Reading Clearing the Path Forward: The Critical Role of Patent Searches

This case addresses[1] the application of issue preclusion in scenarios where two closely related cases allege patent infringement against different versions of the same technology. Specifically, this case discusses whether a party’s waiver of a doctrine-of-equivalents theory in an initial lawsuit extends to a subsequent case involving a newer iteration of the technology previously litigated.
Continue Reading Precluded, Not Repeated: WARF & Apple Continue to Shape our Understanding of Issue Preclusion in Patent Law

After ten years of litigation, the Federal Circuit found that the district court conducted an improper collateral estoppel analysis and upheld ParkerVision’s position on each of the appealed issues.[1]
Continue Reading Different Evidentiary Burdens in IPR Proceedings and District Court Means No Collateral Estoppel Effect on Related Patent Claims

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC (collectively “Jinhe”) and other entities violated 19 U.S.C. § 337.[1] Celanese alleged that Jinhe and other entities were importing Ace-K (an artificial sweetener) made using a process that infringed Celanese’s patents. Each of the patents asserted by Celanese had an effective filing date of September 21, 2016, and as a result are governed by the America Invents Act (“AIA”).
Continue Reading Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims, such that an exception to the one-year time-bar on interference proceedings applies, and (2) whether Bates’ pre-critical claim language materially differed from his post-critical claim language, which dictates whether his claims were time-barred.
Continue Reading Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings