Archive for the ‘Federal Court’ Category

In re NuVasive, Inc. – Explain Yourself!

Monday, December 12th, 2016

In re NuVasive Emphasizes the Importance of Reasoning in the Obviousness Question.

Business Man Holding Contract Agreement Vector Illustration Signed Treaty PaperSince KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness –  that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to arrive at the claimed invention. Since then, it is my opinion that reliance on secondary considerations to support obviousness determinations has steadily increased. Such considerations include unexpected results, long-felt need, failure of others, teachings away from the invention, commercial success and the like. Likewise, Examiners have increased their reliance on factors such as common sense and routine optimization.

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Patent Office Releases Comments on Standards for Patent Eligibility Examination

Friday, November 4th, 2016

mou memorandum of understanding legal document agreement stampOn November 2nd, Robert Bahr released a concise but informative memorandum that could be entitled “What We Learned From McRO and BASCOM.” I have posted on McRO, Inc. dba Planet Blue v. Bandi Namco Games America Inc. et al., 120 USPQ2d 1091 (Fed. Cir. 2016), most recently on Sept. 16th, and I refer you to that post for details of the animation software in question. BASCOM Global Internet Services v. AT&T Mobility LLC, 827 Fed. Cir. 1341 (Fed. Cir. 2016) involved software claims for filtering content received from an Internet computer network. In McRO, the Fed. Cir. found that the claims in question were not directed to an abstract idea. In BASCOM, the Fed. Cir. discussed the requirements for the elusive “inventive concept” required by the Mayo/Alice test.

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PTO Proposes Revisions to the Duty of Disclosure (“Rule 56”)

Wednesday, November 2nd, 2016

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After issuing a brief “notice” in 2011, shortly after the Fed. Cir. revised the duty of disclosure in the Therasense (76 FR at 43631), the PTO has now published a notice of proposed rulemaking to gather comments on its specific proposed amendments to 37 CFR 1.56(a) and (b). 81 Fed. Reg. 74987 (October 26, 2016).

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Chisum and Mueller Dissect The Recent En Banc Decision In Apple v Samsung – “Smartphone Wars: Federal Circuit Shenanigans?”

Monday, October 31st, 2016

This is a guest post by Donald Chisum and Janice Mueller.

The Federal Circuit’s October 7, 2016 en banc decision, 2016 WL 5864573, concerning onchismposte phase of the ongoing Apple v. Samsung smartphone patent wars, may turn out to be the court’s most controversial decision ever. We intend to explore this decision in depth during upcoming Chisum Patent Academy seminars. Meanwhile, for the benefit of Academy graduates and other patent professionals, we circulate here a detailed abstract of the decision, prepared by Academy co-founder Donald Chisum for future inclusion in his Patent Law Digest and the Chisum on Patents treatise. Click to download the detailed abstract.

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