BASF Corp. v SNF Holding Co: Section 102 Dissected

In BASF Corp. v. SNF Holding Co, Appeal No. 2019-1243 (Fed. Cir., April 8 2020), a Fed. Cir. panel of Judges Lourie, Moore and Chen – Lourie writing—reviewed the district court’s holding that a BASF patent (U.S. Pat. No. 5,663,329) on a process for preparing high m.w. polymers was invalid in view of an earlier process carried out by the Celanese Corp. The panel also reviewed the district court’s further finding that the Celanese process evidenced prior art knowledge and use of the patented invention within the meaning of 35 USC 102(a), and that the Celanese process constituted both a public-use bar and an on-sale bar to the patented invention under 102(b). The panel reversed the court’s finding of an on-sale bar, and found that the court had misinterpreted section 102(a) and the public use bar of 102(b), and reversed and remanded the court’s grant of summary judgement for further fact-finding.

Continue reading

Posted in Anticipation, s.102 | Tagged | Leave a comment

New Edition of C.I.P.A. Guide to Patent Acts Published

This “Guide” is a 1528 page book published by the Chartered Institute of Patent Attorneys via Thomson Reuters, and edited by Paul Cole and Richard Davis. Of course, it mostly focused on UK patent law, but draws upon a variety of sources, including decisions of the Boards of Appeal of the EPO, other EP contracting state and “even the USA.” This is the 9th Edition that is referred to by practitioners as the “Black Book.”

Continue reading

Posted in Non-U.S. Practice | Tagged , , | Leave a comment

Solicitor General’s Vanda Brief Deconstructs Mayo

When I was writing my post on INO Therapeutic’s Petition for Cert. on March 16th, I noticed the cite to the “invitation brief in Hikma Pharmaceuticals USA, Inc. v. Vanda Pharmaceuticals Inc., No. 18-817 (U.S. Dec. 6, 2019)(“the brief”). While this brief concluded that the Supreme Court should not grant cert. in this appeal because the Fed. Cir.’s decision was correct, it contains a rigorous analysis of the Mayo v Prometheus decision. Of course, the S. Ct. did not grant cert. in Vanda or in the later Athena case, which the brief argues might be worthy of review.  INO cited the brief as evidence that the Supreme Court’s “reconceptualization” of “traditional limitations on Section 101’s affirmative scope as free-standing atextual ‘exceptions’ has given rise to an array of difficult questions.” US Brief 8. This led me to take a second look at the brief.

Continue reading

Posted in Patent Eligible Subject Matter | Tagged , | Leave a comment

Illumina v. Ariosa – The “Bucket” to Be In

Today, a divided Fed. Cir. panel reversed the district court’s decision invalidating the claim of two Illumina patents, U.S. Pat. Nos. 9,580,751 and 9,738,931, as directed to a natural phenomenon (Illumina, Inc. v. Ariosa Diagnostics, Inc., Appeal No. 2019-1419 (Fed. Cir., March 17, 2020), Judges Lourie and Moore, with Lourie writing, Judge Reyna dissenting).

Continue reading

Posted in Patent Eligible Subject Matter | Tagged , , | Leave a comment