Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- a blog post discussing how a recent decision in a patent case by the Federal circuit focuses “on a novel argument about provisional rights”;
- another blog post discussing how a recent Federal Circuit decision “illustrates circumstances under which the [Patent Trial and Appeal] Board’s obviousness determination did not pass muster.”;
- a piece reporting how the Council for Innovation Promotion recently released a report “urging the Trump Administration and Congress to take 18 key steps to strengthen the U.S. IP system”; and
- a report claiming a recent Federal Circuit decision “has created pitfalls for entities using a type of patent claim that describes an improvement on previous technology, making the so-called Jepson format, which is already uncommon, even less appealing for applicants.”
Dennis Crouch penned a blog post for PatentlyO discussing how a recent decision in a patent case by the Federal circuit focuses “on a novel argument about provisional rights.” Crouch explained how, under 35 U.S.C. § 154(d), “‘provisional rights’ provide some potential of back-pay for infringement that occurs between publication and issuance.” Crouch discussed how the Federal Circuit panel read the statute and “inferred that Congress did not intend to create additional rights for otherwise expired patents.” For more information, check out the relevant opinion in In re Forest.
Kevin E. Noonan issued a blog post for Patent Docs noting how the “inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims, frequently on obviousness grounds.” But Noonan discussed how a recent Federal Circuit decision “illustrates circumstances under which the Board’s obviousness determination did not pass muster.” For more information, check out the relevant opinion in Recor Medical, Inc. v. Medtronic Ireland Manufacturing Unltd.
Eileen McDermott wrote a piece for IP Watchdog reporting how the Council for Innovation Promotion recently released a report “urging the Trump Administration and Congress to take 18 key steps to strengthen the U.S. IP system.” McDermott noted that this is “the second edition of C4IP’s report, titled, Reaffirm and Refine: A Government Agenda for Intellectual Property.“
Ryan Davis authored a report for Law 360 claiming a recent Federal Circuit decision “has created pitfalls for entities using a type of patent claim that describes an improvement on previous technology, making the so-called Jepson format, which is already uncommon, even less appealing for applicants.” Davis discussed how the court held that “‘[t]he invention is not only the claimed improvement, but the claimed improvement as applied to the prior art, so the inventor must provide written description sufficient to show possession of the claimed improvement to what was known in the prior art.'” For more information, check out the relevant opinion in In re Xencor.