Category Archives: Patent

“Action” of “Withholding” Claims in Patent Prosecution

A pre-GATT patent application, i.e., filed prior to June 8, 1995, would be entitled to a patent term of seventeen years from the date of issuance. Otherwise, the issuing patent would be entitled to a patent term of twenty years from the earliest claimed filing date (and 1995 is more than twenty years ago). That […]

Read More

Duplicative-Litigation Doctrine Against the Same

The duplicative-litigation doctrine prevents plaintiffs from “maintain[ing] two separate actions involving the same subject matter at the same time in the same court . . . against the same defendant.” Walton v. Eaton Corp., 563 F.2d 66, 70 (3d Cir. 1977) (en banc). In patent infringement cases, whether patent-infringement complaints involve the same subject matter (such as […]

Read More

Following the Corpus of § 101 Jurisprudence

The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable” under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In Alice, 573 U.S. at 218, and […]

Read More

Silence Is Not Disclosure

For a patent claim to be entitled to the priority date of an earlier patent application, the earlier patent specification must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d […]

Read More

“Applied” in a “Wherein” Clause

Courts often will strive to construe ambiguous claim language to avoid indefiniteness under 35 U.S.C. § 112(b) (a patent’s “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”). In University of Massachusetts v. L’Oréal, S.A., No. […]

Read More