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Claims Need Only Inform a Skilled Artisan of the Metes and Bounds with Reasonable Certainty


By on Apr 23, 2020
Posted In Patents

In a case involving claims with functional language and means-plus-function limitations, the US Court of Appeals for the Federal Circuit found that the district court erred in its determination that three claim terms were indefinite, but agreed with the district court that a fourth term was not indefinite. Nevro Corp. v. Boston Sci. Corp., Case...

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With Notice and Opportunity to Respond, PTAB May Raise New Patentability Issues Based on Art of Record


By on Apr 23, 2020
Posted In America Invents Act, Patents

In an opinion concerning the notice provisions of the Administrative Procedure Act (APA), the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may identify a new patentability issue regarding proposed substitute claims based on prior art of record—but must first notify the parties and provide an...

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Administrative Patent Judges – You’re Fired (At Will and Without Cause)


By on Apr 2, 2020
Posted In Patents

The en banc US Court of Appeals for the Federal Circuit declined to review its October 2019 panel decision holding the appointment of administrative patent judges (APJs) at the US Patent and Trademark Office (PTO) unconstitutional because APJs are appointed as if they are “inferior officers” but vested with authority that is reserved for Senate-confirmed...

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En Banc Federal Circuit Leaves ‘Consisting Essentially Of’ High and Dry


By on Mar 12, 2020
Posted In Patents

In an 8–4 decision, the en banc US Court of Appeals for the Federal Circuit issued a per curiam order upholding its earlier panel decision finding a claim using the transitional phrase “consisting essentially of” to be indefinite because of inconsistences in the manner in which the patent specification explained the meaning of “better drying...

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Texas Appeals Court Rules Private Communications with Customers Not Protected Free Speech


By on Feb 13, 2020
Posted In Trade Secrets

In a case addressing the applicability of free speech as a defense to trade secret misappropriation, the Court of Appeals for the Fifth District of Texas retracted its previous ruling, holding that communications with customers and suppliers did not involve a matter of public concern and were therefore not an exercise of free speech. Goldberg,...

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Making the Most of Markush


By on Jan 22, 2020
Posted In Life Sciences, Patents

The US Court of Appeals for the Federal Circuit expanded the Markush doctrine, determining that the claim language “comprising . . . [at least] . . . a group consisting of . . .” absent some basis or extrinsic evidence for limiting the group, such a group could capture an alleged infringement  having an additional...

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