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By McDermott Will & Emery on Oct 11, 2022
Posted In Uncategorized
McDermott Will & Emery is committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we launched a monthly webinar series: McDermott IP Focus. During these sessions, we will explore global developments in the IP space, including disputes, transactions and procurement, with a significant focus...
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Claims Need Only Inform a Skilled Artisan of the Metes and Bounds with Reasonable Certainty
By McDermott Will & Emery 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 McDermott Will & Emery 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 McDermott Will & Emery 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 McDermott Will & Emery 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 McDermott Will & Emery 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 McDermott Will & Emery 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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