Former USPTO Official Drew Hirshfeld Joins Schwegman Lundberg & Woessner as Principal

We are very pleased to announce that Drew Hirshfeld will be joining SLW on June 27 as a Principal. Drew has been a long-tenured employee of the United States Patent and Trademark Office (USPTO), and was named one of Managing IP’s Top 50 Most Influential People in IP in 2021. (Managing IP is part of the Euromoney Institutional Investor PLC group.) Drew began his career at the USPTO as a Patent Examiner in 1994 and has held a variety of senior management positions. He was named Commissioner for Patents in 2015. He performed the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO from January 2021 to April 2022. Most recently, Drew served as Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director.

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Novartis v. Accord Redux – Panel 2 Reverses Panel 1

To save me a lot of typing, please read my post of January 10, 2022, summarizing the first Panel’s holding in Novartis Pharmaceutical v Accord Healthcare, Inc., 21 F.4th 1362 (Fed. Cir., 2022). The panel in that decision was Judges Moore, O’Malley and Linn, with Moore dissenting. A brief summary of the holding was that the majority of the panel found that a negative limitation that was disclosed only by implication in the specification satisfied the written description requirement.  A slightly different Panel,  consisting of Judges Moore, Linn and Hughes granted rehearing.  The panel split, with Moore writing for the majority and Linn dissenting.

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The Solicitor’s Holistic Approach to the Mayo/Alice Analysis in American Axle

This is not exactly breaking news, and other commentators have discussed it, but I think that the Solicitor General’s Amicus Brief urging the Supreme Court to grant cert. in American Axle v. Neapco Holdings, Appeal No. 20-891 (May 2022) contains language that would be helpful to any inventor faced with a ruling that an invention is not patent-eligible because it is an attempt to monopolize a natural law. If the facts of this case have become hazy, please re-read my posts of January 13th and 11th, 2021, on the proceedings below. American Axle petitioned for cert. after losing at the Fed. Cir. level and the Supreme Court asked the Solicitor General to provide her opinion on the question of “[w]hether claim 22 of petitioner’s patent, which claims a process for manufacturing an automobile driveshaft that simultaneously reduces two types of driveshaft variation, is patent eligible under Section 101.” The Solicitor General’s brief said that it should be patent eligible.

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Almirall v. Amneal Pharmaceuticals – Negative Limitations II

This post gets a “Part II” designation because the Fed. Cir. clarified the support necessary to find a negative limitation in the prior art (Almirall LLC v. Amneal Pharmaceuticals LLC, Appeal No. 2020-2331 (Fed. Cir., March 14, 2022)). In my earlier post on Novartis v. Accord Heathcare, 21 F.4th 1362 (Fed. Cir. 2022), the Fed. Cir. panel addressed the question of how much support was required in the specification for an applicant to add a negative limitation to a claim, to distinguish the prior art.

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