One of the fundamental requirements for a patent is that the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected. This is also known as the “definiteness” requirement of 35 U.S.C. §112. If this requirement is not met, the claim is considered indefinite and therefore invalid. In IBSA Institut BioChimique, S.A., Altergon, S.A., IBSA Pharma Inc., v. Teva Pharmaceuticals USA, Inc., Slip Op. 2019-2400 (Fed. Cir. July 31, 2020), a certified translation of a foreign priority application could not save claims in a US counterpart patent from indefiniteness.
In XY, LLC et al. v. Trans Ova Genetics, LC, 2020 WL 4378028 (Fed. Cir. July 31, 2020), the Federal Circuit addresses a familiar problem: If the “inventive” part of a claimed invention resides purely in its math, can routine and conventional physical steps taken in conjunction with that math make the invention subject-matter eligible? The court answers “yes, at least in some circumstances.”
On August 3, the Federal Circuit issued a decision addressing, among other things, the doctrine of equivalents (the “DOE”). The case, Bio-Rad Laboratories, Inc., et al. v. 10X Genomics Inc, provided an opportunity for the Federal Circuit to address long-established DOE principles that it has visited less frequently in recent years than during the 1990s and early 2000s.
In In re PersonalWeb Techs. LLC, 2020 WL 3261168 (Fed. Cir. June 17, 2020), the Federal Circuit addresses an issue that we all studied in law school, but that remains tricky when we encounter it in practice: the preclusive effect of a dismissal with prejudice. In particular, PersonalWeb discusses both the familiar doctrine of claim preclusion (or, res judicata), and the less familiar Kessler doctrine (which is unique to patent law). Patent litigators should keep these doctrines in mind whenever they resolve cases.
The Federal Circuit continues to develop its case law regarding “exceptional” cases under 35 U.S.C. § 285. Last week, the court held that it was an abuse of discretion for a district court not to consider an unsuccessful plaintiff’s “manner of litigation.” Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 2020 WL 3551988 (Fed. Cir. July 1, 2020) (“ECT”).
On June 30, the Federal Circuit issued a decision invalidating a patent claim on the ground of indefiniteness. The decision is Pacific Coast Building Products, Inc. v. CertainTeed Gypsum, Inc., et al., Case No. 2019-1524 (Fed. Cir. June 30, 2020) (non-precedential).
In United States Patent and Trademark Office et al. v. Booking.com B. V., the Supreme Court rejected the United States Patent and Trademark Office’s (“PTO”) hidebound rule that the combination of a generic word and “.com” is also generic.
On May 8, 2020, the USPTO announced that it will initiate a COVID-19 Prioritized Examination Pilot Program, under which it will accept 500 qualifying patent applications for prioritized examinations and exempt them from the normal prioritized examination fees. Prioritized examination puts an application on a fast track rather than waiting for examination to begin in the normal queue, which may take years.
A unanimous Supreme Court has held that the Convention on the Recognition and Enforcement of Arbitral Awards (New York Convention) does not bar non-signatories from asserting arbitration agreements under principals of domestic law. GE Power Energy Conversion France SAS Corp. v. Outokumpu Stainless USA, LLC, et al, No. 18-1048, 2020 WL 2814297 (U.S. Supreme Court, June 1, 2020).
In Illumina v. Ariosa, 2019-1419 (Fed. Cir. March 17, 2020) (“Illumina”), the Federal Circuit held “method of preparing” life science claims patent-eligible under § 101, concluding that the claims were distinct from diagnostic claims and not “directed to” a natural phenomenon. The 2-1 panel majority reversed a Northern District of California ruling that the claims of the two related patents-at-issue were patent-ineligible. The decision may have significant doctrinal impacts.