Biogen v. Serano – When is a Recombinant Polypeptide Novel?

Posted on May 27, 2021 by Warren Woessner

When I posted about this Fed. Cir. decision (Biogen MA v. EMD Serano, Appeal no. 2019-1133 (Fed. Cir., Sept. 28, 2020) on October 12, 2020, I viewed it as a straightforward application of the maxim that an otherwise non-novel product does not become novel by reciting method of preparation steps in the claims, e.g. that is “nested’ in the claims. Now, after reading Biogen’s petition for cert. filed in May 2021, I am not so sure that the Fed. Cir. decision is as simple as the panel would have us believe. The main claim of U.S. Pat. No. 7,588,755 reads, in part:

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Want an Expedited Decision on your Appeal? Use the USPTO’s Fast Track Appeals Pilot Program

Posted on May 5, 2021 by Warren Woessner

Guest post from the USPTO:

What is the Fast-Track Appeals Pilot Program?

Under the Fast-Track Appeals Pilot Program, appellants can have their ex parte appeals advanced out of turn. Appellants simply file a petition to request fast-track review of their ex parte appeal and pay a $420 petition fee. The Patent Trial and Appeal Board (PTAB or Board) has set a target of issuing a decision within six months from the date the petition is granted and the ex parte appeal is entered into the pilot program.

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Listen to “A Conversation with Janice Mueller, Author of Mueller on Patent Law”

Posted on April 21, 2021 by Warren Woessner

Guest post from Chisum Patent Academy:

The Chisum Patent Academy is pleased to share with you a recording of the recent webinar from Fastcase, Inc.: “A Conversation with Janice Mueller, Author of Mueller on Patent Law.” In the one-hour webinar, Janice answers questions about:

  • Hot button topics from 2020 Federal Circuit and Supreme Court patent law decisions
  • How to analyze Federal Circuit opinions
  • Research tips for using the “Mueller on Patent Law” treatise (print versus on-line formats; updates; intended audience for the treatise; case analysis versus authorial commentary)
  • Hot button topics from 2020 Federal Circuit and Supreme Court patent law decisions
  • How to analyze Federal Circuit opinions
  • Research tips for using the “Mueller on Patent Law” treatise (print versus on-line formats; updates; intended audience for the treatise; case analysis versus authorial commentary)

To listen to the webinar on YouTube, click here.

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Neapco’s Brief in Opposition to AA’s Petition for Cert.

Posted on April 9, 2021 by Warren Woessner

On March 31, 2021, Neapco Holdings LLC filed its Brief in Opposition to American Axle’s Petition for Cert. If you need a refresher on the proceedings to date, please read (or re-read) the analyses I posted on Jan. 11, 2021 and on August 3, 10, 11 and 14 of 2021. The claims on appeal recite a method for manufacturing a shaft assembly of a driveline system by providing a hollow shaft member [the driveshaft, as for a car or truck], tuning a mass and a stiffness of at least one liner; and inserting the … liner into the shaft member; wherein the … liner is a tuned resistive absorber to attenuating shell mode vibrations and wherein the … line is a tuned reactive absorber for attenuating bending mode vibrations.

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