Section 112

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Mine Your Patent Application and You Might Find a Licensee

By Sandip H. Patel on Posted in Appeals, Claim Construction, Interferences, Section 112
A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at … Continue Reading

Come on, Board, Finish What You Started

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR, Section 112, Sections 102/103
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so … Continue Reading

PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge

By Heather R. Kissling on Posted in Post Grant Review, Section 112
The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far.  We discussed the first final written decision here, where all claims were upheld in the face of … Continue Reading

Federal Circuit Splits Hairs in Hair Removal Product Interference Proceeding

By Marshall Gerstein on Posted in Appeals, Interferences, Section 112
In General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., Case No. 2017-1012 (Fed. Cir. May 4, 2018), the Federal Circuit affirmed the PTAB’s August 2016 decision that General Hospital Corporation’s (GHC) claims involved in an interference proceeding (that GHC requested) failed to meet the written description requirement. But the court also vacated the PTAB’s denial of … Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Doctrine

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, Section 112, Sections 102/103
In Paice LLC, The Abell Foundation, Inc., v. Ford Motor Company, Appeal No. 2017-1406 (Fed. Cir. Feb. 1, 2018), the Federal Circuit reversed a PTAB decision for failing to properly apply the doctrine of incorporation by reference, thereby reminding the PTAB as well as practitioners alike of the proper standard for invoking and applying that … Continue Reading

Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts

By Jennifer Burnette on Posted in Amendments, Section 112
In Hologic, Inc. v. Smith & Nephew Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018), the Federal Circuit concluded that disclosure of a species provides written descriptive support for a claimed genus where the invention was in a predicable field of art, the species was a well-known member of the genus, and other members of … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Section 112
PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading

PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?

By Michael R. Weiner on Posted in Section 112
In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough … Continue Reading

Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan

By Sandip H. Patel on Posted in Appeals, Section 112
The Federal Circuit recently vacated the PTAB’s decisions in three interferences. Board of Trustees of Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, Appeal 2015-2011 (Fed. Cir. June 27, 2017). These interferences concern which parties’ inventors first conceived methods for diagnosing fetal aneuploidies using cell-free fetal DNA from maternal blood samples. The PTAB … Continue Reading

To Establish Entitlement to an Earlier Effective Filing Date, Every Claim Limitation Must be Addressed

By Joshua T. Elliott on Posted in Section 112
The PTAB’s final written decision in Inguran, LLC d/b/a Sexing Techs. v. Premium Genetics (UK) LTD., Case PGR2015-00017, Paper 22 (PTAB 2016), illustrates what a Patent Owner must do to demonstrate that a challenged claim is entitled to an earlier effective filing date in an AIA trial. The PGR involved U.S. Patent 8,933,395, which issued … Continue Reading

PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

By Lynn L. Janulis, Ph.D. on Posted in Claim Construction, Institution / Denial, Inter Partes Review, IPR, Section 112, Sections 102/103
Petitioners are finding themselves caught in a Catch-22.  The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims.  Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies. Recently, the PTAB decided … Continue Reading

PTAB Institutes Third Biotech/Pharma Post-Grant Review

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Post Grant Review, Section 112
To date, only 43 petitions for Post-Grant Review have been filed with the PTAB.  Nine PGR petitions (21% of total petitions) have been filed to challenge patents arising from Art Unit 1600, which examines applications directed to biotechnology and organic chemistry subject matter.  The PTAB recently instituted the third ever PGR for a biotech-related patent … Continue Reading

District Court Rejects Indefiniteness Argument Despite Board Finding of No Corresponding Structure for Means-Plus-Function Claim

By Kate Nuehring Su on Posted in Claim Construction, Inter Partes Review, Section 112
A pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after … Continue Reading

No Written Description, No Problem when Prosecution History Disclaimer is Applied

By Sharon M. Sintich, Ph.D. on Posted in Claim Construction, Inter Partes Review, Section 112
The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments … Continue Reading

The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

By Katherine L. Neville, Ph.D. on Posted in Inter Partes Review, Post Grant Review, Section 101, Section 112, Sections 102/103
In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become … Continue Reading

Squeezing the ‘Antibody Exception’ to Written Description into a Corner

thumbnail image of DNA strandBy Marshall Gerstein on Posted in Biotechnology, Inter Partes Review, Section 112
The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the … Continue Reading

PTAB Grants Motion to Amend Claims

By William K. Merkel, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review, Post Grant Review, Section 112, Sections 102/103
In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  … Continue Reading

Petitioners Are Not Faring Well on 112-challenges in CBM Review

By Sandip H. Patel on Posted in Covered Business Method, Section 112
The transitional program for covered business method (CBM) patents is a review proceeding administered by the Patent Trial and Appeal Board to reconsider the patentability of one or more claims in a CBM patent. Petitioners seeking CBM review have enjoyed good success in knocking out claims for reciting subject matter ineligible for a patent. They … Continue Reading
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