Invalidity Based on Enablement: McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., et al., No. 2019-1577 (Fed. Cir. May 20, 2020)

Attorney: Marina I. Miller, Ph.D.
September 1, 2020

McRO, Inc. (“McRO”) filed a lawsuit against multiple video game developers (“the Developers”), alleging that the Developers infringed three method claims of U.S. Patent No. 6,611,278 (“the ‘278 patent”), owned by McRO. The district court held the claims invalid for ineligibility under 35 U.S.C. § 101, but the Federal Circuit (“the Court”) reversed that holding in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I). On remand, the district court held that the Developers were entitled to summary judgment of non-infringement, because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims. McRO appealed.<... Read more

An Automated Notification System for Providing Advance Notification of the Pickup or Delivery of Goods was Found Patent Ineligible

Attorney: Marina I. Miller, Ph.D.
July 20, 2020

Electronic Communication Technologies, LLC (“ECT”) sued ShoppersChoice.com, LLC (“ShoppersChoice”), alleging that ShoppersChoice infringed claim 11 of U.S. Patent 9,373,261 (“the ’261 patent”). The district court granted ShoppersChoice’s motion for judgment on the pleadings that claim 11 was invalid under 35 U.S.C. § 101. ECT appealed. The Federal Circuit (“the Court”) affirmed the judgment of the district court.<... Read more

Requirements Under COVID-19 Prioritized Examination Pilot Program

Attorney: Marina I. Miller, Ph.D.
June 8, 2020

The USPTO has launched a new Covid-19 Prioritized Examination Pilot Program to help small and micro entities. The USPTO will accept requests for prioritized examination of up to 500 qualifying patent applications without requiring payment of certain fees associated with prioritized examination. Under this pilot, the USPTO will advance out of turn certain patent applications related to COVID-19 for examination, resulting in their prioritized examination. The USPTO aims to provide final disposition of patent applications in the pilot in one year or less after it grants prioritized status. <... Read more

Obviousness of Compounds Having "Significant Structural and Functional Similarities" With Known Compounds

Attorney: Marina I. Miller, Ph.D.
April 27, 2020

Mylan Pharmaceuticals Inc. and others (“Mylan”) appealed from the District Court’s grant of summary judgment that claim 8 of U.S. Patent 8,552,025 owned by Valeant Pharm. Int’l, Inc.was not invalid. Valeant Pharm. Int’l, Inc. v. Mylan Pharm., Inc., No. 2:15-cv-08180 (SRC), 2018 WL 2023537 (D.N.J. May 1, 2018). The Court of Appeals for the Federal Circuit (“the Court”) reversed the decision of the district court.<... Read more

"A Method of Preparation" and Patent Eligibility Under Section 101

Attorney: Marina I. Miller, Ph.D.
March 30, 2020

Before LOURIE, MOORE, and REYNA, Circuit Judges. Illumina, Inc. and Sequenom, Inc. ("Illumina") filed suit against Ariosa Diagnostics, Inc., Roche Sequencing Solutions, Inc., and Roche Molecular Systems, Inc. ("Roche") alleging infringement of U.S. Patents 9,580,751 and 9,738,931. Roche moved for summary judgment that the asserted claims were invalid under 35 U.S.C. § 101. The district court granted Roche's motion holding that the claims of the '751 and '931 patents were directed to ineligible subject matter. Illumina appealed. The Federal Circuit ("the Court") reversed the district court's grant of summary judgment and remanded for further proceedings.... Read more

Repeated Description of an Embodiment as the Present Invention that Solves Problems in the Prior Art may Lead to Disavowal of Claim Scope, Even Without an Express Concession of Other Embodiments

Attorney: Marina I. Miller, Ph.D.
January 3, 2020

Multiple companies (collectively "Techtronic Industries" or "TTI") appealed from a final determination of the United States International Trade Commission (the "Commission") that their imported product (garage door opener products) infringed the claims of U.S. Patent 7,161,319 (the "319 patent").... Read more

Patent Eligibility Under 35 U.S.C. 101 of Articles of Manufacture

Attorney: Marina I. Miller, Ph.D.
November 6, 2019

FYF-JB, LLC sued Pet Factory, Inc. for infringing its U.S. Patent 9,681,643 ("the ‘643 patent") covering a tug toy for animals that emits a sound when it is pulled on both sides. Pet Factory moved to dismiss FYF-JB's complaint, arguing that the asserted claims were directed to patent ineligible subject matter under 35 U.S.C. § 101. The United States District Court for the Northern District of Illinois ("the Court") denied Pet Factory's motion to dismiss.... Read more

Specification Must Adequately Disclose the Claimed Invention to Avoid Invalidation for Lack of Written Description

Attorney: Marina I. Miller, Ph.D.
September 9, 2019

Drs. Stephen Quake and Christina Fan ("Quake") appealed a decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") finding the four claims of Quake's U.S. Patent 8,008,018 and Claim 25 of their U.S. Application No. 12/393,833 unpatentable for lack of written description.... Read more

Invalidity of Broad Claims for Lack of Enablement in the Absence of Sufficient Disclosure of the Structure/Function Correlation and Unpredictability in the Art

Attorney: Marina I. Miller, Ph.D.
July 17, 2019

Enzo Life Sciences, Inc. ("Enzo") appealed the decision of the U.S. District Court for the District of Delaware granting summary judgment against Enzo and holding that the asserted claims were invalid for lack of enablement. The Federal Circuit affirmed.... Read more

Written Description In Provisional Application: Perdue Pharma L.P. v. Andrei Iancu.

Attorney: Marina I. Miller, Ph.D.
May 28, 2019

Amneal Pharmaceuticals, LLC. ("Amneal") filed two petitions for inter partes review of claims 1–13 and 16–19 of U.S. Patent No. 9,034,376 ("the '376 patent") of Purdue Pharma L.P., P.F. Laboratories, Inc. and Purdue Pharmaceuticals L.P. ("Purdue"). In the petitions, Amneal argued that claims 1–13 and 16–19 were unpatentable for obviousness over the combinations of multiple prior art references including US 2002/0187192 A1 ("Joshi").... Read more