In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under 35 U.S.C. § 101. This case provides...
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Supreme Court Uses Enablement To Curb Broad Patents
On May 18, 2023, the Supreme Court held claims of two patents owned by Amgen, Inc. to be invalid for failing to enable persons skilled in the art to practice the invention as required by 35 U.S.C. §112. Amgen, Inc., et al. v. Sanofi, et al. ___ U.S. ___, No. 21-757...
District Court Finding of Invalidity Does Not Excuse Applying Fintiv Factors For Discretionary Denial
On May 2, 2023, in Volvo Penta of the America’s, LLC v. Brunswick Corp., Case No. 2022-1366 et al., Paper 15 (PTAB May 2, 2023), Director Vidal sua sponte vacated a PTAB decision denying IPR institution due to a district court finding of invalidity. ...
Federal Circuit Revives Big Tech’s Fintiv Challenge
On March 13, 2023, in Apple, Inc., et al. v. Vidal, Case No. 2022-1249 (Fed. Cir. March 13, 2023), the Federal Circuit reversed and remanded a decision from the Northern District of California dismissing a lawsuit filed by several large technology companies for lack...
Plausible Factual Allegations Supported By The Intrinsic Record Key To Overcoming Section 101 Patent-Eligibility Challenge
On September 28, 2022, the Federal Circuit reversed and remanded a decision from the Northern District of California granting a Rule 12 Motion to Dismiss on the basis that claims of U.S. Patent No. 9,432,452 were invalid under 35 U.S.C. § 101. Coop. Entm’t, Inc. v....
Fifth Circuit Denies Patent Owners’ Attempt To Formalize PTAB’s Discretionary Denials
In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas. The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking regarding the standards for discretionary...