The INFORM Act Passes; Combating Counterfeiting with Transparency in Online Sales
BakerHostetler | IP Intelligence
by Heather McDonald, Robb Beckerlegge, Kevin Wallace, Megan Corrigan and Sydney Park
2w ago
The recent passage of the Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (INFORM Act) bears significant implications for brand owners and online marketplaces. For brand owners, the disclosure of collected information could yield valuable intelligence about possible counterfeiters. Such information can be used to help brand owners enforce their rights by giving them a point of contact for those enforcement efforts. Such information is not as readily available today, and when it is, it is not always accurate. For online marketplaces, there is significant co ..read more
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The Supreme Court Again Declines to Address the Written Description Standard
BakerHostetler | IP Intelligence
by Ron Kern
3w ago
Without any comments, the Supreme Court has denied Juno Therapeutics’ Petition for Rehearing, which requested that the Court hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC. Juno filed its petition after the Federal Circuit held that Juno’s claims were invalid because the patent at issue “does not disclose representative species or common structural features to allow a person of ordinary skill in the art to distinguish between scFvs that achieve the claimed function and those that do not.” Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1342 ..read more
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Claim Terms Are Not Necessarily Interpreted by Patents Incorporated by Reference
BakerHostetler | IP Intelligence
by Scott Conley
1M ago
Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. 2022). The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference. The patents at issue are directed to systems and methods for detecting computer viruses in a Downloadable. A non-asserted family member patent defines the term “Downloadable” as “a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer.”[1] Two of the asserted patents define “Downloadab ..read more
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Marks That Are Opposites Sometimes Attract Refusal of Registration
BakerHostetler | IP Intelligence
by Robert Horowitz
1M ago
When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential). In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” for “sweets and candies, namely, gummies and soft candies.” A United States Patent and Trademark Office (USPTO) examining attorney cited a registration for “BIG WIN” for “candy” because of confusing similarity. The applicant appealed and suffered a big, no ..read more
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Juno Therapeutics Requests That the Supreme Court Wait to Make a Decision on Its Written Description Question Until Amgen’s Enablement Case Is Resolved
BakerHostetler | IP Intelligence
by Ron Kern
2M ago
Juno Therapeutics (Juno) has filed a Petition for Rehearing with the Supreme Court, requesting that the Court vacate its previous order denying Juno’s petition for certiorari and hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC. Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno’s request to review the scope of the written description requirement. In granting certiorari in the Amgen case, the Supreme Court agreed to address: Whether enablement is governed by the ..read more
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Supreme Court Denies Review of the Written Description Requirement
BakerHostetler | IP Intelligence
by Ron Kern
2M ago
Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno Therapeutics, Inc.’s (Juno) request to review the scope of the written description requirement. Interestingly, both cases involved similar questions – whether the respective portion of 35 U.S.C. §112(a) is governed by the statutory language or whether enablement and written description apply to the “full scope” of the claimed invention. Section 112 of the Patent Act requires a patent’s specification to “contain a written description of the invention ..read more
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Federal Circuit Develops the ‘At Once Envisage’ Standard of Anticipation and Affirms the Importance of Specialized Considerations in the Chemical Arts
BakerHostetler | IP Intelligence
by Michael Schwartz Ph.D.
3M ago
Anticipation of a claim generally requires that a single prior art reference explicitly discloses each and every claim element.[1] However, absent an express teaching in the prior art, a claim may also be anticipated if it is directed to a member of a limited class that a person of ordinary skill in the art would “at once envisage” from the teachings of the reference.[2] The U.S. Court of Appeals for the Federal Circuit recently provided more guidance on the bounds of its “at once envisage” standard in affirming a notable Patent Trial and Appeal Board (PTAB) decision. In Mylan Pharms. Inc. v ..read more
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Supreme Court to Address What it Means to Have an Enabling Disclosure
BakerHostetler | IP Intelligence
by Ron Kern
3M ago
The Supreme Court has granted Amgen’s Petition for a Writ of Certiorari, agreeing to address what it means to provide an enabling disclosure. In particular, Amgen asked the Court to address: Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. §112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without subs ..read more
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Characterization of Claim Elements as “Conventional” Results in Section 101 Subject Matter Ineligibility
BakerHostetler | IP Intelligence
by Ron Kern
7M ago
In an attempt to broaden a patent’s disclosure and provide Section 112 support for features that are not explicitly disclosed within the patent’s specification (such as reagents, assays, techniques, etc.), patent applications are often drafted with boilerplate language to indicate that other “conventional,” “well-known” or “routine” features may be used. But acknowledging that features of a claimed invention are conventional, well-known or routine can be detrimental to patentability. Take the Federal Circuit’s recent decision in CareDx, Inc. v. Natera, Inc., for example, in which the court he ..read more
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Federal Circuit Hears Case on Whether an AI-Generated Invention Is Patentable
BakerHostetler | IP Intelligence
by Alaina J. Lakawicz
8M ago
On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable. The Patent Applications As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an AI machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, that he filed with the U.S. Patent and Trademark Office (USPTO ..read more
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