Here’s the latest.

Federal Circuit Indicates Conventional Technologies Can Be Used in Unconventional Ways

Reported by John M. Rogitz on

In the article, Rogitz focuses on a quote from the Federal Circuit’s recent modified opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc. The case involved a DNA separation method that separates maternal DNA from fetal DNA for which the Federal Circuit ruled the claims to not be directed at an abstract idea. The Federal Circuit partially decided that the claims failed the Alice step one analysis based on finding that the claims were “conventional,” typically an Alice step 2 inquiry. The Federal Circuit went on to highlight that  “conventional separation technologies can be used in unconventional ways.” Rogitz gives insight on what this quote could mean for future Alice rulings:

[T]he Federal Circuit’s analysis from this modified opinion is important because in many abstract idea rejections, particularly in the computer technology arts, the examiner often cuts off the analysis by simply alleging “conventionality” with a conclusory statement. But of course, conventional processors may be used in unconventional (new) ways, just as DNA separation techniques can be. Coupled with the (commonly neglected) requirement of Berkheimer v. HP, Inc. to support an allegation of “conventional” at Alice Step 2 with evidence, this Illumina decision may provide a stronger counterargument to abstract idea rejections.

For more on this case, see our coverage.

Foreign visitor’s unborn child not a ‘person’ under Vaccine Act, Federal Circuit holds

Reported by Barbara Grzincic on

In Dupuch-Carron v. HHS, the Federal Circuit held that a Bahamian woman’s in utero child does not meet the qualifications for later compensation under the National Vaccine Injury Compensation Act. The Vaccine Act provides compensation for persons who receive injurious vaccinations outside the United States and then return to the United States within a six month period. Because the child was given the vaccinations in utero and then traveled to the United States in utero, the unborn child does not qualify as a “person” who returned to the country under the Vaccine Act. Grzincic further explains the Federal Circuit’s reasoning:

The [2016] amendment [to the Vaccine Act] incorporated part of the 21st Century Cures Act to allow compensation for children who were injured as a result of vaccines administered to their mothers during pregnancy. However, the amendment applies only after the child is born, the Federal Circuit said; it did not change the Vaccine Act’s definition of a ‘person’ as ‘every infant member of the species homo sapiens who is born alive at any stage of development.’

Federal Circuit: TTAB’s Decision To Enter Judgment As A Discovery Sanction Was Appropriate

Reported by Melissa Scott on

The Federal Circuit in Kaszuba v. Iancu, affirmed a Trademark Trial and Appeal Board (“TTAB”) decision imposing judgement against Kaszuba in the form of a discovery sanction, thus, cancelling Kaszuba’s alcohol trademark entirely. The harsh sanction imposed by the TTAB followed after Kaszuba repeatedly refused to comply with the TTAB’s numerous discovery orders. Even after being warned by the TTAB and threatened with sanctions, Kaszuba still failed to comply and later found no sympathy from the Federal Circuit. Scott highlights this key takeaway:

The Federal Circuit’s decision underscores the need to timely comply with discovery obligations and the specifics of TTAB Orders. Failure to do so, can result in the loss of trademark rights—a result that all parties and trademark practitioners obviously want to avoid. Yet another reminder that parties and counsel’s conduct before the TTAB should be above reproach.