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

by McDermott Will & Schulte | Apr 23, 2020 | 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 Nos. 18-2220; -2349 (Fed. Cir. Apr. 9, 2020) (Moore, J.).

Nevro owns patents for improved technologies for high-frequency spinal cord stimulation therapy to alleviate pain, while avoiding side effects associated with conventional stimulation therapies. Several of the asserted claims recite systems and devices in which the stimulation therapy signals are “paresthesia-free,” meaning they do not cause a tingling, pins-and-needles sensation. The district court found the claimed “paresthesia-free” systems and devices to be indefinite because infringement of the claim depends on the effect of the system on the patient, so a skilled person cannot understand the metes and bounds of the claim with reasonable certainty. Nevro appealed.

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Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds

by Mandy H. Kim | Apr 23, 2020 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges between the claimed pH range and the pH range for similar prior art compounds. Valeant Pharms. Intl. v. Mylan Pharms. Inc., Case No. 18-2097 (Fed. Cir. Apr. 8, 2020) (Lourie, J.).

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Claimed Process Not Anticipated by Third-Party’s Prior Secret Use

by James M. Oehler | Apr 23, 2020 | Patents

Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or used by others,” “on-sale” and “public-use” bars of 35 U.S.C. § 102. BASF Corp. v. SNF Holding Co. et al., Case No. 19-1243 (Fed. Cir. Apr. 8, 2020) (Lourie, J.).

BASF owns a patent on a process for preparing certain polymers. The claimed polymerization process allows easy removal of “sticky” polymers from walls of the tubular reaction vessel by including a conical taper with specific dimensions at the bottom of the vessel. BASF filed a patent infringement suit against SNF, who in turn alleged that the prior art “Sanwet” process invalidated the patent. The Sanwet process was developed in Japan by Sanyo and licensed to third-party Celanese for use in the US prior to the patent’s critical date. Sanyo provided substantial technical support to help Celanese with the process. Celanese was required to keep the Sanwet process confidential and could only disclose information to employees on a need-to-know basis. Employees were also required to sign confidentiality agreements.

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Federal Banks are “Persons” Under the AIA

by Amol Parikh | Apr 23, 2020 | Patents

The US Court of Appeals for the Federal Circuit held that the Federal Reserve Banks of several cities are “persons” under the America Invents Act (AIA) and therefore may petition for post-issuance review under the AIA. Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al., Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) (Moore, J.).

Bozeman owns two patents directed to methods of authorizing and clearing financial transactions to detect and prevent fraud. The Federal Reserve Banks of Atlanta, Boston, Chicago, Cleveland, Dallas, Kansas City, Minneapolis, New York, Philadelphia, Richmond, San Francisco and St. Louis filed a petition for covered business method (CBM) review of several claims of Bozeman’s patents. The Patent Trial and Appeal Board (PTAB) ultimately found the challenged claims ineligible under 35 U.S.C. § 101. Bozeman appealed.

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Lights Turned Out on Validity Finding

by Yoshiko Ito | Apr 23, 2020 | Patents

Finding that the Patent Trial and Appeal Board’s (PTAB) anticipation and obviousness decisions resulted from an erroneous interpretation of the claim language and a misunderstanding of case law, the US Court of Appeals for the Federal Circuit vacated the PTAB’s decision and remanded for further consideration. Technical Consumer Products v. Lighting Science Group Corp., Case No. 19-1361 (Fed. Cir. Apr. 8, 2020) (Stoll, J.).

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About the Editors

by McDermott Will & Schulte | Apr 17, 2020 |

Results for "Patent" Paul Devinsky
Counsel
Washington, DC
+1 202 756 8369
pdevinsky@mcdermottlaw.com

Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul’s full bio.

Amol Parikh
Partner
Chicago
+1 312 984 6477
amparikh@mcdermottlaw.com

Amol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Read Amol’s full bio.

Jodi Benassi
Partner
San Francisco
+1 628 218 3896
jbenassi@mcdermottlaw.com

Jodi Benassi focuses her practice on intellectual property litigation. She has successfully represented companies ranging from Fortune 100 companies to emerging startups in a broad range of industries, including technology, entertainment, finance, beverage, pharmaceutical and life sciences. Read Jodi’s full bio. Search for: BLOG EDITORS

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About Us

by McDermott Will & Schulte | Apr 17, 2020 |

Results for "Patent" McDermott Will & Schulte’s IP Update blog highlights the latest cases and legislative issues shaping intellectual property (IP), including patents, trademarks, trade secrets, copyrights and more.

Combining a deep knowledge of IP law and business savvy, our IP team serves as our clients’ secret weapon in the courtroom and the boardroom for IP litigation, licensing, monetization and strategic portfolio development. With a team of more than 100 IP lawyers and professionals, we earn major patent and trademark victories in dozens of district and appellate courts. Whether you’re building the next iconic brand, protecting game-changing new technology or creating new revenue streams from your established IP assets, we can help you achieve your business goals at every stage of the IP lifecycle.

Our team is known for delivering business-driven solutions and innovative ideas to keep our clients ahead of the competition in jurisdictions around the world. In the last five years, we have handled more than 225 patent cases and led more than 100 trademark and copyright cases in US District Courts, and conducted more than 125 proceedings before the Patent Trial and Appeal Board. We protect and manage the IP portfolios of some of the world’s most notable innovators, and we marry our legal and technical expertise at the deal table to maximize value and minimize risk to our clients’ valuable IP assets. To us, an engagement isn’t just a matter; it’s a partnership. Central to our approach is investing deeply in your business to develop strategies that fully leverage your IP assets and give you a strategic advantage in today’s competitive global market.

If you have questions or topic suggestions, please let us know via the Contact form, or reach out to one of our editors directly. Search for: BLOG EDITORS

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