Category: Patent

by Dennis Crouch

Prof. Chris Holman recently characterized Amgen v. Sanofi as an “endorsement of the Federal Circuit’s current interpretation and application of the enablement requirement, and maintenance of the status quo.”  Although I largely align with Holman’s views, I note that the Supreme Court did not explicitly engage with Federal Circuit precedent. More specifically, the Court neither cited nor discussed any Federal Circuit or CCPA decision outside of case-specific historical documents.

The most recent enablement case invoked by the Supreme Court in Amgen is Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245 (1928). The Court also referenced several other historically significant enablement cases, including Wood v. Underhill, 5 How. 1 (1846); The Incandescent Lamp Patent, 159 U. S. 465 (1895); and Minerals Separation, Ltd. v. Hyde, 242 U. S. 261 (1916). The Court went to lengths to present O’Reilly v. Morse, 15 How. 62 (1854), as an enablement decision, even though in both Alice and Mayo, the court had labeled O’Reilly as an eligibility decision. The approach of Amgen echoes that of the Supreme Court’s 2010 Bilski decision, which advised a simple adherence to established precedents.

Continue reading The Silent Echo: Supreme Court’s Non-Engagement with the Federal Circuit in Amgen v. Sanofi at Patently-O.

Editor’s note: this post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. – Jason

By: Piers Blewett, Principal at Schwegman Lundberg & Woessner (SLW)

(This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.)

Hello! I’m Piers Blewett, a principal at Schwegman Lundberg & Woessner (SLW), and a patent attorney who started in a place once known as Rhodesia, now Zimbabwe. My personal journey exposed me to the nuances of systemic change and the gap that can often exist when it comes to universal access to opportunities.

During the transitional period in Zimbabwe and later South Africa, I witnessed firsthand that systemic change does not always include broad availability of opportunities. Elements like knowledge transfer and mentorship can often seem out of reach, particularly for those at the beginning of these transitions.

Continue reading Guest Post: Piers Blewett, Bridging the Gap: IP Education for All with SLW Academy at Patently-O.

by Dennis Crouch

Medtronic, Inc. v. Teleflex Innovations S.A.R.L., — F.4th — (Fed. Cir. 2023)

The case involving Medtronic and Teleflex centered on five patents related to a coaxial guide catheter used in interventional cardiology procedures. These patents, US Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379, cover inventions devised to offer an “enhanced backup support” in contrast to using a guide catheter individually.

In an attempt to invalidate these patents, Medtronic launched a succession of Inter Partes Review (IPR) petitions. Despite the initial approval of the petitions, the Board eventually ruled in favor of Teleflex, the patent holder. The pivotal question on appeal was whether U.S. Patent 7,736,355 (“Itou”) could be regarded as prior art.

In a split decision, the Federal Circuit confirmed the Board’s decision, establishing that the first-to-invent law from before the America Invents Act (AIA) allowed Teleflex to antedate the prior art by demonstrating prior invention. The case underlines a situation where the transition to the AIA has resulted in the loss of certain rights for patent holders. Under the AIA’s provisions, Itou would have been considered prior art, therefore preventing Teleflex’s patenting. The also case stands out as Itou was clearly the first inventor, but this evidence was not taken into account due both to arcane pre-AIA rules and due to the IPR process focusing only on the published patent documents.

Continue reading Challenges of Proving Inventorship: Corroboration of All Inventive Facts at Patently-O.

Longtime patent attorney Martin Abramson just sent me a copy of his short 153 page book titled The Devil’s Dictionary of Patent Law & Beyond: Tapping the Funny Bone of Patent Law.  I just spent 10 minutes flipping through and did actually laugh out loud at one of the squibs.

The Devil’s Dictionary of Patent Law and Beyond by Martin Abramson fills a long-standing humor gap in patent law. It contains diabolical definitions, hilarious cartoons, and amusing anecdotes on patent law and the general law environment in which it exists. Where there’s satire, clarity follows, and as in the original Devil’s Dictionary by Ambrose Bierce, the droll definitions in the present book have the “ring of truth.” The author has more than 40 years of IP experience and a deep knowledge of its history, so along with the patent law are showcased the little known gems of patent lore.

Also a great gift for those fortunate enough to have a patent attorney in your life.

Continue reading Devil’s Dictionary of Patent Law at Patently-O.

Editor’s note: This post is the first in a series relating to the Diversity Pilots Initiative, a project co-organized by Professors Bagley & Chien together with personnel from the USPTO that seeks to advance inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. Below, Professor Bagley introduces herself, the project, and the series. – Jason Rantanen

By: Margo A. Bagley, Asa Griggs Candler Professor of Law, Emory University School of Law, co-inventor, and Principal, Diversity Pilots Initiative. Watch her video for Invent Together, entitled Challenges Encountered as a Diverse Inventor.

In addition to being Associate Dean for Research and Asa Griggs Candler Professor of Law at Emory University School of Law, I am an African-American woman, co-inventor on two patents, patent attorney and law professor, author of numerous articles, chapters, and books on patent law, and advisor on patent issues to governments and international organizations. And yet, it is my firsthand experience, as a member of groups that have been systematically underrepresented and overlooked in the innovation ecosystem, that gives me a deep understanding and resolve to champion diversity and inclusion in innovation and led me to co-organize, with Professor Colleen Chien and personnel from the USPTO, the first Innovator Diversity Pilots conference held at Santa Clara Law School on November 18, 2022.

Continue reading Guest Post: Margo Bagley, The Diversity Pilots Initiative at Patently-O.

Editor’s note: This post is the first in a series relating to the Diversity Pilots Initiative, a project co-organized by Professors Bagley & Chien together with personnel from the USPTO that seeks to advance inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. Below, Professor Bagley introduces herself, the project, and the series. – Jason Rantanen

By: Margo A. Bagley, Asa Griggs Candler Professor of Law, Emory University School of Law, co-inventor, and Principal, Diversity Pilots Initiative. Watch her video for Invent Together, entitled Challenges Encountered as a Diverse Inventor.

In addition to being Associate Dean for Research and Asa Griggs Candler Professor of Law at Emory University School of Law, I am an African-American woman, co-inventor on two patents, patent attorney and law professor, author of numerous articles, chapters, and books on patent law, and advisor on patent issues to governments and international organizations. And yet, it is my firsthand experience, as a member of groups that have been systematically underrepresented and overlooked in the innovation ecosystem, that gives me a deep understanding and resolve to champion diversity and inclusion in innovation and led me to co-organize, with Professor Colleen Chien and personnel from the USPTO, the first Innovator Diversity Pilots conference held at Santa Clara Law School on November 18, 2022.

Continue reading Guest Post: Margo Bagley, The Diversity Pilots Initiative at Patently-O.

By Chris Holman

Much has been already been written about the Supreme Court’s recent decision in Amgen v. Sanofi, including Dennis’s prompt response. Speaking for myself, I read Amgen as an endorsement of the Federal Circuit’s current interpretation and application of the enablement requirement, and maintenance of the status quo. The enablement requirement is an important (and I would argue the primary) non-prior art-based doctrinal tool for policing claim scope, and as such it plays an important role in preventing inventors of pioneering inventions from laying too much claim to subsequent innovation.

As the Supreme Court observed in Amgen, although Sawyer and Man might have been the first to invent an electric lamp filament of “carbonized fibrous or textile material,” this achievement did not necessarily entitle them to a patent encompassing all electric lamps filaments constructed of this broadly defined class of material, including Edison’s subsequent, but apparently vastly superior, bamboo-based filament. Similarly, Samuel Morse’s invention of the telegraph did not mean he was allowed a patent encompassing any use of electricity “for marking or printing intelligible characters, signs, or letters, at any distance” (sounds like the internet).

Continue reading Some Thoughts on Amgen v. Sanofi at Patently-O.

By Chris Holman

Much has been already been written about the Supreme Court’s recent decision in Amgen v. Sanofi, including Dennis’s prompt response. Speaking for myself, I read Amgen as an endorsement of the Federal Circuit’s current interpretation and application of the enablement requirement, and maintenance of the status quo. The enablement requirement is an important (and I would argue the primary) non-prior art-based doctrinal tool for policing claim scope, and as such it plays an important role in preventing inventors of pioneering inventions from laying too much claim to subsequent innovation.

As the Supreme Court observed in Amgen, although Sawyer and Man might have been the first to invent an electric lamp filament of “carbonized fibrous or textile material,” this achievement did not necessarily entitle them to a patent encompassing all electric lamps filaments constructed of this broadly defined class of material, including Edison’s subsequent, but apparently vastly superior, bamboo-based filament. Similarly, Samuel Morse’s invention of the telegraph did not mean he was allowed a patent encompassing any use of electricity “for marking or printing intelligible characters, signs, or letters, at any distance” (sounds like the internet).

Continue reading Some Thoughts on Amgen v. Sanofi at Patently-O.

by Dennis Crouch

In OneSubsea IP v. FMC Tech (Fed. Cir. 2023), the court has affirmed a district court denial of attorney fees for the successful defendant. A key holding in the case is that denial of summary judgment serves as a big flashing sign that the case is not exceptional.

OSS sued FMC back in 2015 for infringing claims found in ten different patents all relating to subsea processing of hydrocarbons (oil and gas). This includes: adding chemicals, separating water and sand from the hydrocarbons; increasing pressure; etc. The patents required a “flow diverter assembly” to “divert fluids” to and from a processing area. The parties argued about the word “divert.” In the context of the invention, the district court concluded that it required two different potential flowpaths, and that fluid flow must be forced to follow one instead of the other. And simply changing directions is not a diversion.

The two-flowpath requirement was a problem for the patentee. FMC’s accused structure just had one flowpath that passed through the processor as shown in the figure below.

The Proceedings: The district court issued its claim construction back in 2016, but rather than quickly granting summary judgment of non-infringement, it stayed the case pending outcome of parallel inter partes reviews challenging the patents’ validity.

Continue reading Summary Judgment Denial and Its Ramifications for Attorney Fee Motions at Patently-O.