abandoned application
An “abandoned application” refers to the abandonment of a patent or trademark application. An application is removed from the docket of pending applications at the U.S.
An “abandoned application” refers to the abandonment of a patent or trademark application. An application is removed from the docket of pending applications at the U.S.
Are claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—patent-eligible subject matter?
Alice Corporation was granted patents on several processes and systems relating to the use of computer software to facilitate securities trading and reduce risks of parties not fulfilling contractual obligations. CLS Bank developed software for its own use in similar transactions. CLS brought an action for declaratory judgment, asserting that Alice’s patents were subject-matter ineligible because they did no more than recite abstract ideas regarding fundamental economic concepts. Alice counterclaimed, asserting that CLS infringed Alice’s patents. The district court found the Alice patents invalid, but the Federal Circuit reversed, holding that Alice’s patents fell within the “abstract ideas” exception to the generally broad policy of patent eligibility. Alice argues that the abstract ideas exception is meant to be read narrowly and apply to fundamental truths such as facts of nature. CLS counters that Alice’s patents merely cover fundamental economic concepts and that these should fall within the exception. At issue is a basic question about the scope of patent-eligible subject matter, and the breadth of the abstract ideas exception. The Court’s decision could fundamentally alter the scope of what is patentable. The decision may encourage innovation in the software and other industries by rewarding those who expend resources to bring about a useful product to the public.
Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?
In securities trading, when two parties agree to a trade there is often a time lapse between when the parties enter into the agreement and when the actual trade is performed. See CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1274 (Fed Cir. 2013).
Should the enablement requirement of a patent claim focus on whether the disclosures simply enable skilled people in the field to “make and use” the claimed invention or whether the disclosures accurately enable the “full scope” of the invention – all variations of the invention that fall within the patent claim’s description of the invention; and, would a relatively easy trial-and-error procedure equate to undue experimentation?
This case asks the Supreme Court to clarify whether Amgen’s disclosure of common techniques – a trial-and-error procedure and amino acid substitution technique – is sufficient to satisfy the enablement requirement for Amgen’s patent claim over all antibodies that bind to PSK9 protein and block PSK9 protein’s ability to bind to LDL receptors. Amgen argues that the focus of the enablement standard should be on whether the disclosure leads people to “make and use” the claimed invention and that common techniques do not amount to undue experimentation. Sanofi counters that the disclosures should be specific for broad patent claims and that Amgen’s trial-and-error techniques amount to undue experimentation. This case has significant implications on future innovation in the pharmaceutical industry and the patent law system.
Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “time and effort.”
Heart disease and cholesterol named elevated low-density lipoprotein (“LDL”) are correlated. Amgen Inc. v. Sanofi, Aventisub LLC. at 1082. When cholesterol is in the blood stream, the LDL receptors remove LDL cholesterol. Id. And the degradation of LDL receptor is regulated by an enzyme named proprotein convertase subtilisin/kexin type 9 (“PCSK9”). Id. at 1082–83.
The authors would like to thank Professor Oskar Liivak for his guidance and insights into this case.
If an antitrust plaintiff alleges that a competitor unlawfully tied a patented product to an unpatented product, must she also prove that the defendant had sufficient power to control the price or quantity of products in the patented good's market?
The Sherman Antitrust Act forbids product-tying arrangements by companies that possess substantial market power in the tying-product's market. While the party alleging the violation must generally prove such market power exists, market power is assumed when a company holds a valid patent on the tying product. Illinois Tool Works ("Illinois") makes the availability of licensing agreements for its patented products contingent on the exclusive use of other, unpatented products. It urges the Court to overturn the patent-based market-power presumption. Independent Ink, an Illinois licensee, claims that the tying arrangement improperly forces it to buy Illinois' ink, despite the availability of cheaper, effective substitutes, thereby stifling beneficial competition. The direct impact of the Court's decision, whether it preserves the status quo or changes its rule, making antitrust violations harder to prove, will be felt by sellers who tie patented products to unpatented ones, firms who buy products from such companies, and the consumers who ultimately purchase products from either company. Indirectly, the case may mark the Roberts Court's first foray into the doctrine of stare decisis, which provides insight into the current Court's view on when and how to defer to its past decisions. As a result, the effects of the decision may be felt in many areas of the Court's jurisprudence which don't deal with the antitrust law.
Whether, in an action under the Sherman Act, 15 U.S.C. ? 1, alleging that the defendant engaged in unlawful tying by conditioning a patent license on the licensee's purchase of a non-patented good, the plaintiff must prove as part of its affirmative case that the defendant possessed market power in the relevant market for the tying product, or market power instead is presumed based solely on the existence of the patent of the tying product?
Trident is a wholly owned subsidiary of Illinois Tool Works, Inc. ("Illinois"). Independent Ink, Inc. v. Illinois Tool Works, Inc.
What is the standard for determining whether or not an invention is “obvious,” and thus unpatentable, under 35 U.S.C. §103(a)? Did the Federal Circuit correctly hold that an existing patent may only be invalidated for being obvious if there is clear and convincing proof that some “teaching, suggestion, or motivation” exists which would lead a person of ordinary skill in that art to combine prior art and create the new invention?
Teleflex, Inc. sued KSR International Co. in the United States District Court for the Eastern District of Michigan for allegedly infringing upon KSR’s adjustable automotive pedal assembly patent. KSR argued that Teleflex’s patent was invalid for being obvious because it combined preexisting pedal technology and preexisting electronic control technology. The District Court agreed with KSR that Teleflex’s patent was invalid for being obvious and granted KSR’s motion for summary judgment. On appeal, the United States Court of Appeals for the Federal Circuit reversed, holding that the patent was not obvious because KSR failed to establish that some “‘suggestion, teaching, or motivation’ would have led a person of ordinary skill” in the field of automotive pedal technology “to combine the relevant prior art teachings” to create Teleflex’s device. The Supreme Court will either uphold or change the definition of non-obviousness used in the United States for the last twenty years. Broadening the definition of non-obviousness could invalidate patents for any number of devices that combine pre-existing elements and open everything from the pharmaceutical industry to the computer software industry to greater competition.
Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. §103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
American scientists and artisans have the right to seek patents and licensing for their unique innovations. The United States Constitution grants Congress the exclusive authority “to promote the science and useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.” U.S. Const. Art. 1, § 8, Cl. 8.
Law about... Patent
Can a party be be liable for patent infringement under 35 U.S.C. § 271(b) where it neither performs every step of the patent nor induces another party to perform every step of the patent, but rather performs some steps and knowingly induces the other party to perform the remaining steps?
Akamai Technologies, Inc. (“Akamai”) sued Limelight Networks, Inc. (“Limelight”) for allegedly infringing a patent for a method of delivering web content. Limelight had performed all but one step of the patented method, leaving its customers to perform the remaining step. The Federal Circuit held that Limelight’s conduct constituted infringement by inducement under 35 U.S.C. § 271(b). The Federal Circuit ruled that the combined conduct of multiple entities may constitute patent infringement where a party performs all but one step of a patented method and knowingly induces another party to perform the remaining step of the method. Akamai argues that the Federal Circuit’s new standard more comprehensively protects the rights of patent owners. However, Limelight counters that the standard too broadly expands the scope of patent infringement liability and could lead to more abusive patent litigation. Limelight argues that to be a violation of § 271(b), a single entity must directly infringe on a patent under § 271(a), and that no such violation is present here. On the other hand, Akamai argues that the Supreme Court should re-instate the jury’s verdict, which found that Limelight controlled a third party’s conduct sufficient to satisfy § 271(a). Additionally, Akamai argues that the Federal Circuit’s new rule is consistent with common law tort principles and with Supreme Court precedent.
Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).
Akamai Technologies, Inc. (“Akamai”), a content delivery network, owns a patent on a method for delivering web content. See Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1306 (Fed. Cir. 2012).
A patent grants the patent holder the exclusive right to exclude others from making, using, importing, and selling the patented innovation for a limited period of time. The U.S. Patent Act, 35 U.S.C. §§ 1 et seq., was enacted by Congress under its Constitutional grant of authority to secure for limited times to inventors the exclusive right to their discoveries.
In the latest Supreme Court case on patent law, LG Electronics, Inc. (LGE) sued Quanta Computers, Inc. (Quanta) for patent infringement. A patent license agreement between LGE and Intel allowed Intel to use LGE's patents but required Intel to notify its customers, including Quanta, that its license did not extend to third-party purchasers' combinations of Intel and non-Intel components. LGE alleges that Quanta infringed LGE's patents by combining Intel and non-Intel components. LGE argued that Intel's sale to Quanta did not exhaust LGE's rights as a patent holder, allowing LGE to sue Quanta. Quanta, however, argued that Intel's authorized sale to Quanta exhausted LGE's patent rights. The Federal Circuit agreed with LGE, holding that the exhaustion doctrine did not apply because the notice provided by Intel to Quanta created a conditional sale, and that sales of patented devices do not exhaust a patent holder's methods claims. In deciding this case, the Supreme Court will determine whether a patent holder can sue customers who use patented components purchased from licensees. The outcome of this case will clarify the exhaustion doctrine generally and will help define the scope of patent holders' rights, including their ability to collect royalties from and sue downstream users of their patents.
Whether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent's patent rights were not exhausted by its license agreement with Intel Corporation, and Intel's subsequent sale of product under the license to petitioners.
LG Electronics, Inc. (LGE), a Korean company, owns patents that relate to personal computers. See LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1368 (Fed. Cir.
Is the government a “person” who can petition the United States Patent and Trademark Office to review patent validity under the Leahy-Smith America Invents Act?
The Supreme Court will determine whether the government is a “person” for the purposes of post-issuance review proceedings under the Leahy-Smith America Invents Act (“AIA”). Return Mail, Inc. (“Return Mail”), the owner of a patent for processing undeliverable mail items, argues that Congress intended the AIA to incorporate a specific meaning of the term “person,” supported by statute and judicial precedent, that excluded the government, and would thus prohibit government agencies from initiating AIA review proceedings. The United States Postal Service (“Postal Service”) counters that the statutory context, as supported by historical evidence and statements made by the Supreme Court, reveals Congress’s intent to include government agencies in the term “person” for the purposes of the AIA. The United States Court of Appeals for the Federal Circuit ruled that the term “person” in the AIA did not exclude the government, and that the government could petition for patent review under the AIA. Return Mail is now appealing that decision in a case that will have implications for patent litigation, the estoppel doctrine, and executive agencies.
Whether the government is a “person” who may petition to institute review proceedings under the Leahy-Smith America Invents Act.
In this case, the United States Postal Service (“Postal Service”) has challenged the validity of Return Mail, Inc.’s (“Return Mail”) patent for processing undeliverable mail items. Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350, 1353 (Fed. Cir.
Does the Biologics Price Competition and Innovation Act require that an applicant must provide the sponsor with 180 days’ notice before the applicant starts to market its biosimilar product? In addition, if 180 days’ notice is required, may the sponsor seek an injunctive remedy precluding marketing of the biosimilar until the 180 days’ notice period runs?
This case presents the Supreme Court the opportunity to determine how to construe the Biologics Price Competition and Innovation Act (“BPCIA”). Specifically, this case focuses on the notice requirements of the BPCIA and asks whether notice of marketing a biosimilar must be provided 180 days after the approval of the biosimilar but before the marketing of the product. In addition, if the Court determines that notice is required after approval, but before marketing, the Court must decide what remedies are proper to correct the improper notice. Pointing to the BPCIA’s purpose, Sandoz Inc. argues that notice is only required 180 days before marketing; and, that injunctions are improper remedies to correct any potential notice-fault. In contrast, Amgen Inc. also points to the BPCIA’s purpose to argue that notice can only be effective if made after FDA approval; and, that the only way to provide a meaningful remedy would be to allow an injunction. Depending on the Court’s holding, this case could impact the balance between innovation and affordability in the biologics market.
The Biologics Price Competition and Innovation Act created a streamlined pathway for the licensure of biological products that are “biosimilar” to or “interchangeable” with a previously approved biological product, known as a reference product. 42 U.S.C. §262(k). Congress enacted a detailed procedure for the resolution of patent disputes between §262(k) applicants and reference product manufacturers, known as sponsors. Id. §262(l). The petitions present two questions concerning whether the §262(l) framework is mandatory or optional for applicants:
1. Is an applicant required to provide the sponsor with 180 days’ notice after licensure and before it be- gins marketing its biosimilar product, and may a court enforce that duty by ordering the applicant not to market its product until 180 days after a post-licensure no- tice?
2. Is an applicant required to provide the sponsor with a copy of its biologics license application and related manufacturing information, and may a court issue an order enforcing that duty?
In 2010 Congress passed the Patient Protection and Affordable Care Act which enacted the Biologics Price Competition and Innovation Act (“BPCIA”). Amgen Inc. v. Sandoz Inc., 794 F.3d 1347, 1351 (Fed. Cir.