Supreme Court Calls For Some Deference In Claim Construction Standard Of Review

On January 20, 2015, the Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.finding that the Federal Rules of Civil Procedure call for some deference in the claim construction standard of review. In particular, the Court held that when claim construction is based on external evidence, a district court’s findings of subsidiary facts are to be reviewed for clear error, while its ultimate claim construction is to be reviewed de novo. Although this decision changes the Federal Circuit’s nearly 20-year practice of applying full de novo review since the Supreme Court’s 1996 decision in Markman v. Westview Instruments, Inc., it is not surprising in view of the Court’s recent decisions that refuse to make exceptions to the usual rule for patent matters. Continue reading this entry

Can Any DNA Claims Still Be Patented?

In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC § 101. I first reported the decision here, and now revisit that decision and the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc. (Myriad I), to consider the patent eligibility of DNA claims, and identify the types of DNA claims that may survive the Myriad decisions. I’ll be presenting some of these views at the USPTO Eligibility Forum later today.  Continue reading this entry

Five Things You Need To Know About The USPTO Interim Guidelines On 101

The USPTO issued interim guidelines on 101 (“Interim Guidance”) on December 15, 2014. We summarized the Interim Guidance in this post here, and now highlight five things practitioners and stakeholders need to know as they consider how to apply the Interim Guidance to specific claims.

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USPTO Issues Final Patent Term Adjustment Rules Under Novartis

The USPTO has published final Patent Term Adjustment (PTA) rules addressing the treatment of Requests for Continued Examination (RCEs) under the Federal Circuit decision in Novartis v. Lee, which I discussed here. The final rules create a new type of deduction for “Applicant delay” that will apply to applications in which an RCE is filed on or after March 10, 2015.   Continue reading this entry

Federal Circuit Finds "Classic" Reissue Error

In Fleming v. Escort Inc., the Federal Circuit noted that the error on which Fleming’s reissue patents were based was a “classic” type of error justifying reissue: the inventor’s failure to appreciate the full scope of his invention, and the inadequacy of the original claims. This case also addresses issues under 35 USC § 102(g), which remains relevant for most patents in force today. Continue reading this entry