ARE Patent Litigation Alert: NYIPLA Files Amicus Brief in Mayo v. Prometheus

On September 8, 2011, the New York Intellectual Property Law Association (“NYIPLA”) filed an amicus brief with the U.S. Supreme Court in Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010).  (Click here for a copy).  As reported in an earlier ARELAW Alert (see http://www.arelaw.com/publications/view/prometheusmayo/), the Supreme Court granted certiorari for a […]

ARE Patent Law Alert:
Overview of the Leahy-Smith America Invents Act on Patents

On Thursday, September 8, 2011, the U.S. Senate passed the Leahy-Smith America Invents Act, H.R. 1249 (“the Act”), by an 89-9 vote, thus adopting the form of the bill previously approved by the House of Representatives. It is expected that the President will sign the bill into law shortly. The Act amends the Patent Law […]

ARE Patent Litigation Alert: Federal Circuit—Applying Section 101 as a “Coarse Filter”— Confirms the Patent Eligibility of Some But Not All Claims In Classen Remand

On August 31, 2011, the U.S. Court of Appeals for the Federal Circuit issued another seminal decision on patent-eligibility under 35 U.S.C. § 101 in Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634, 2006-1649, slip op. (Fed. Cir. Aug. 31, 2011) (“Classen IV”). In a prior decision, the same panel had found that all the […]

ARE Patent Litigation Alert:
NYIPLA Files Amicus Brief in Mayo v. Prometheus

On September 8, 2011, the New York Intellectual Property Law Association (“NYIPLA”) filed an amicus brief with the U.S. Supreme Court in Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010).  (Click here for a copy).  As reported in an earlier ARELAW Alert (see http://www.arelaw.com/publications/view/prometheusmayo/), the Supreme Court granted certiorari for a […]

Bayh–Dole Act does not override employees’ rights to unassigned inventions

Board of Trustees of the Leland Stanford Junior Univ. v Roche Molecular Sys., 131 S. Ct. 2188, US Supreme Court, 6 June 2011 (‘Stanford III’) Abstract The US Supreme Court confirms that the Bayh–Dole Act does not override employees’ rights to unassigned inventions.   Legal context Under the Bayh–Dole Act, a federal contractor to the […]

ARE Patent Litigation Alert:
Federal Circuit—Applying Section 101 as a “Coarse Filter”— Confirms the Patent Eligibility of Some But Not All Claims In Classen Remand

On August 31, 2011, the U.S. Court of Appeals for the Federal Circuit issued another seminal decision on patent-eligibility under 35 U.S.C. § 101 in Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634, 2006-1649, slip op. (Fed. Cir. Aug. 31, 2011) (“Classen IV”). In a prior decision, the same panel had found that all the […]

US reissue procedure can fix failure to include dependent claims

In re Tanaka, No. 2010-1262, US Court of Appeals for the Federal Circuit, 2011 US App. LEXIS 7739, 15 April 2011   Abstract US reissue proceedings may be used to add additional dependent claims even if none of the issued claims are changed.   Legal Context Once a US patent issues, a patentee may seek […]

ARE Patent Litigation Alert:
Recent Applications of the Bilski Test for Patentable Subject Matter by The Federal Circuit and District Courts

Two recent decisions, one by the Federal Circuit and one by a district court, illustrate how court’s are applying the flexible test for patentable subject matter set forth in Bilski v. Kappos, 130 S. Ct. 3218 (2010). First, in CyberSource Corp. v. Retail Decisions, Inc., — F.3d — (Fed. Cir. 2011), the Federal Circuit considered […]

ARE Patent Litigation Alert: US Supreme Court Grants Cert for the Second Time in Prometheus v. Mayo Case on Patent-Eligible Subject Matter

The U.S. Supreme Court has granted certiorari for the second time in Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010) ("Prometheus II"), cert. granted, No. 10-1150, 2011 U.S. LEXIS 4764 (U.S. June 20, 2011) to address the issue of whether and in what circumstances a patent claim should be held invalid for […]

ARE Patent Litigation Alert:
USPTO Proposes to Revise the Materiality Standard for the Duty to Disclose to Conform with the Therasense

Yesterday, the United States Patent and Trademark Office (“USPTO”) proposed to revise the standard for materiality in the duty to disclose information during the prosecution of patents in light of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co, Nos. 208-1511, 2008-1512, 2008-1513, 2008-1514, 2008-1595, 2011 WL 2028255 (Fed. Cir. May 25, […]