In Solvay S.A. v. Honeywell International Inc., the Federal Circuit upheld the district court’s finding that Solavay’s HFC patent was invalid under 35 USC § 102(g). Although the impact of this case may be muted by the first-inventor-to-file provisions of the America Invents Act (AIA), the “secret prior art” provisions of § 102(g) will remain relevant for most patents with a priority date earlier than March 16, 2013. Continue reading this entry
In Tempo Lighting, Inc. v. Tivoli, LLC, the Federal Circuit vacated the decision of the U.S. Patent Office Patent Trial and Appeal Board that had reversed the Examiner’s rejection of most of the claims of the patent at issue. While the decision touches on a few important legal issues, this ten year reexamination proceeding illustrates the need to impose a statutory deadline for completing post grant proceedings in order to make them a more viable alternative to district court litigation. Continue reading this entry
In a non-precedential decision issued February 6, 2014, the Federal Circuit affirmed a district court decision that upheld the four Orange Book listed patents for Pfizer’s Lyrica® product. According to the court’s rules, the non-precedential designation of Pfizer Inc. v. Teva Pharmaceuticals USA, Inc. means that the panel determined that it did not add signiﬁcantly to the body of law, but future panels may still look to it for “guidance or persuasive reasoning.” As such, this decision upholding the Lyrica® patents illustrates the strength and breadth of patent protection that can be obtained for a new molecular entity. Continue reading this entry
According to an article on Law360, Bristol-Myers Squibb Co. is challenging the validity of two Genetic Technologies Ltd. patents on the basis that the claimed intron sequence analysis methods recite natural phenomena that do not satisfy the patent-eligibility requirements of 35 USC § 101. This case highlights some of the questions left unanswered by the Supreme Court decisions in Prometheus and Myriad.
Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of patent eligibility jurisprudence. Viewed in that light, this case could reflect the court’s confidence with at least the “abstract idea” category of § 101 issues, at least in the context of computer-implemented method claims for performing conventional mental steps. Continue reading this entry