Tag Archives: patent prosecution

Omitted Elements and Written Description: Federal Circuit’s Split Decision in Allergan v. Sun Pharma

August 29, 2024PatentEssential Element Test, Federal Circuit, obviousness-type double patenting, paid, patent prosecution, priority claims, Written DescriptionDennis Crouch

by Dennis Crouch

I previously wrote about Allergan USA, Inc. v. MSN Laboratories Private Ltd. (Sun Pharma), No. 24-1061 (Fed. Cir. Aug. 13, 2024), focusing on Federal Circuit's about-face on obviousness-type double patenting. My original post skipped over an important aspect of the opinion: the court's 2-1 decision favoring the patentee on the written description requirement of 35 U.S.C. § 112(a). This portion of the case focuses once again on when an element is "essential" to the invention and therefore required in the claims.

Four key takeaways:

We presume that no element is "essential."
Courts should look for indications in the patent documents that the feature is critical, essential, etc.
The court here relied upon broad claims in the priority filing that were later deleted in order to show the inventor possessed embodiments that did not require the element.
The key focus for written description is comparing the specification with the claims. Although expert testimony may be relevant, it must be directly tied to the intrinsic record.

All of these elements point to the idea that it is the job of the patent drafter and prosecutor to ensure the written description is sufficient, and to avoid pitfalls that might indicate otherwise.

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Old Dog, New Tricks: Government Defends 200-Year-Old ODP Doctrine Even Under Modern Statutes

August 22, 2024Patentdouble patenting, Federal Circuit, Historical Cases, paid, patent prosecution, PTA, Supreme Court, USPTODennis Crouch

by Dennis Crouch

The debate over obviousness type double patenting continues. Most recently, the U.S. Government has filed its brief in opposition to certiorari in Cellect v. Vidal.

In its decision, the Federal Circuit ruled that the Congressionally mandated "patent term guarantee" that adjusts patent term to account for undue USPTO delay (known as PTA) triggers a risk that a later-expiring patent will be invalidated due to obviousness-type double patenting (ODP). The Government brief consistently defends and agrees with the CAFC's decision -- arguing primarily (1) that ODP is an ancient patent tradition (much like eligibility) and (2) applying ODP to PTA is supported by the statute.

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Emphasizing Context in Claim Construction

August 21, 2024PatentClaim Construction, Federal Circuit, indefiniteness, IPR, obviousness, paid, patent litigation, patent prosecution, PTAB, Section 112Dennis Crouch

by Dennis Crouch

In Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright's holding that claims of Neonode's US8095879 are invalid as indefinite. No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.

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Patently-O Bits and Bytes

June 4, 2024Patentpaid, patent agent, patent attorney, patent damages, patent drafting, patent eligibility, patent examiner, patent infringement, patent law, patent litigation, Patent Office, patent office comment period, patent office fees, patent office leadership, patent office policy, patent office regional office, patent prosecutionDennis Crouch

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SCT: False Claims Act Actions Based Upon Fraudulently Obtained Patent Rights

April 25, 2024Patentfalse claims act, obviousness, Oil States, paid, patent fraud, patent litigation, patent prosecution, public disclosure bar, qui tam, Supreme CourtDennis Crouch

by Dennis Crouch

This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]

The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who "knowingly presents" a "fraudulent claim for payment" to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as "relators," to bring qui tam actions on the government's behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).

To prevent opportunistic lawsuits, however, Congress has sought to strike a "balance between encouraging private persons to root out fraud and stifling parasitic lawsuits"

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What I’m doing with LLM-Based GenAI Tools

April 14, 2024Patentblog post writing, claim drafting, image recreation, law professor, LLM-based GenAI, office action response, paid, patent practice, patent prosecution, prior art search, specification drafting, transcriptionDennis Crouch

by Dennis Crouch

As many of you know, I have done machine learning work for many years -- starting in the 1990s while in college. However, like most of the world, I have been surprised and amazed by the power of LLM-based GenAI technology and have been trying to figure out ways to use it both for patent practice and in my job as a law professor. I hope that it helps me become both more effective and more efficient.

On the Patently-O side,

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USPTO Fees: Targeted Higher Fees to Push for Compact

April 3, 2024Patentcompact prosecution, continuation applications, design patents, paid, patent prosecution, terminal disclaimerDennis Crouch

by Dennis Crouch

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees. [Read the Notice of Proposed Rulemaking] While incremental fee adjustments are common, the proposed changes for FY2025 are particularly noteworthy due to their magnitude in certain targeted areas and potential impact on applicant behavior. Many filers will likely change their practices based on the new higher fees. The USPTO appears to be using these fee adjustments as a tool to shape patent prosecution strategies, encouraging more compact patent applications and smaller patent families. However, the USPTO is also seeking ways to ensure that the agency remains financially solvent and able to perform its statutory duties in the face of inflation and the Unleashing American Innovators Act of 2022 which reduced patent fees for small and micro entity applicants. The USPTO's proposed fee increases are largely unchanged from the plan announced last year.

One of the most striking changes in the proposed fee structure . . .

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A New Horizon: Design Patent Practitioner Bar Proposed by USPTO

May 15, 2023Patentdesign patent, intellectual property, notice-and-comment, paid, patent eligibility, patent infringement, patent law, patent litigation, patent prosecution, USPTO, USPTO DirectorDennis Crouch

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Comments on USPTO Proposed Fee Changes

May 10, 2023Patentadditional claims, AIA Trials, economic analysis, paid, patent fees, patent law, patent policy, patent prosecution, patent revenue, terminal disclaimer, USPTODennis Crouch

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Attorney Fees on Undecided Inequitable Conduct Issues

May 8, 2023PatentAffirmed Without Opinion, Damages, en banc, Ethics, Federal Circuit, Inequitable Conduct, paid, patent infringement, patent law, patent litigation, patent prosecutionDennis Crouch

by Dennis Crouch

United Cannabis Corp (UCANN) vs. Pure Hemp Collective, --- F.4th --- (Fed. Cir. 2023)

The UCANN vs. Pure Hemp patent case has come to a close with the Federal Circuit affirming the district court's decision to deny attorney fees to Pure Hemp. The original infringement lawsuit was filed in 2018, with UCANN suing Pure Hemp for infringing US Patent No. 9,730,911, covering various high concentration cannabis and CBD extract formulations. During the litigation, UCANN filed for bankruptcy, causing the case to be stayed, and eventually, the parties stipulated to a dismissal of the infringement claims with prejudice. However, the stipulated dismissal did not include any discussion of attorney fees -- leading to the current appeal.

Following the dismissal, Pure Hemp moved for attorney fees and sanctions, arguing that UCANN's counsel committed inequitable conduct during patent prosecution and that UCANN's litigation counsel had a conflict of interest. The district court sided with UCANN and denied attorney fees, stating (1) that Pure Hemp was not the prevailing party and (2) that Pure Hemp did not prove that the case was exceptional. The Federal Circuit has now affirmed the decision, finding that the district court did not abuse its discretion in finding the case unexceptional. Although district court the district court erred in not finding Pure Hemp to be the prevailing party, the error was harmless.