Here’s the latest.

Federal Circuit Snubs Extrinsic Evidence in Reversing Ruling on 12(b)(6) Motion Arguing Invalidity Under § 101

Reported by M. Andrew Holtmanand and Brock Wilson on

In CardioNet, LLC, et al. v. InfoBionic, Inc., the Federal Circuit reversed a district court’s ruling that affirmed a defendant’s 12(b)(6) motion that CardioNet’s asserted claims were invalid under 35 U.S.C. § 101, based on step one of the two-step test articulated by the Supreme Court. The Court explained that while courts are free to consult extrinsic evidence, especially if the extrinsic evidence is overwhelming, the court is not required to engage in such an inquiry in every case.

This case also provides guidance about how to overcome an patent eligibility challenge at the 12(b)(6) stage. the Author’s conclude:

[t]his case suggests that a patent’s written description is paramount in determining whether the claims are patent eligible at the 12(b)(6) stage. To that end, patent practitioners may consider providing ample descriptions of advantages that a claimed invention may have over prior art alternatives. Such descriptions could be dispositive in defending against early motions based on § 101.

For more on this case, see our coverage.

Federal Circuit Issues Several Rulings Defining Contours of Arthrex Decision

Reported by Steve Brachmann on

The Federal Circuit, in Arthrex v. Smith & Nephew, found that administrative patent judges (APJs) at the Patent Trials and Appeal Board (PTAB) had been unconstitutionally appointed. The Federal Circuit has issued several rulings further defining the reach of the decision. Steve Brachmann reports that:

[t]he Federal Circuit’s recent decisions show several limits to the impact of Arthrex, which has spurred a large number of PTAB appeals since the Court denied a motion to stay issuance of the Arthrex mandate this March.

Brachmann’s article summarizes several recent Federal Circuit decisions related to Arthrex. For more on this case, see our coverage.

Federal Circuit Upholds Application of Dedication – Disclosure Doctrine at the Pleading Stage

Reported by Thomas H. Wintner, Adam P. Samansky, and Nana Liu on

In Eagle Pharm. Inc. v. Slayback Pharma LLC, the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine. The asserted patents disclosed but did not claim the use of ethanol. Slayback argued that its use of ethanol could not infringe under the doctrine of equivalents because it was disclosed but not claimed in the asserted patents. The Federal Circuit agreed. The court reasoned that the disclosure-dedication doctrine:

only requires that the specification disclose the unclaimed subject matter as an alternative to the relevant claim limitation.  The Federal Circuit noted that the specifications of the asserted patents unequivocally identified ethanol as an alternative pharmaceutically acceptable fluid, and nothing in the specifications indicated that the use of ethanol was limited to certain formulations.