DEY, L.P. v. SUNOVION PHARMACEUTICALS, INC. (Fed. Cir. 2013) (P) – Third party public use under 35 U.S.C. § 102(b)

by Steve Driskill | May 20, 2013 | [sub] public use, Prior Art

Even in the case of third-party uses, being “accessible to the public” still requires public availability; “secret or confidential third-party uses do not invalidate later-filed patents.” A formal confidentiality agreement, however, is not required to show non-public...

IN RE STEVE MORSA (Fed. Cir. 2013) (P) – Prior art enablement burden of proof

by Steve Driskill | Apr 5, 2013 | [sub] enabling disclosure, Prior Art

An applicant is not required to submit affidavits or declarations to challenge the enablement of prior art references. Any non-frivolous argument that cited prior art is not enabling must be addressed by the PTO. Background / Facts: The application on appeal from the...

ASTRAZENECA v. AUROBINDO (Fed. Cir. 2012) (P) – Reissue to consider IDS

by Steve Driskill | Dec 14, 2012 | [sub] information disclosure, Inequitable Conduct, Prior Art

Somewhat of a moot point going forward in view of the new AIA supplemental examination procedures, the takeaway here is simply that a reissue application is permissible for an unintentional failure to file an IDS, and that “deceptive intent” in the reissue statute...

THE FOX GROUP, INC. v. CREE, INC. (Fed. Cir. 2012) (P) – Enablement of prior inventions under 35 U.S.C. § 102(g)

by Steve Driskill | Nov 28, 2012 | [sub] enabling disclosure, Prior Art

Public demonstration of possession of a prior invention under 35 U.S.C. § 102(g) is sufficient to demonstrate that the prior inventors did not abandon, suppress, or conceal their invention. Enabling others to reproduce the invention is not required. Background /...

SUPERIOR INDUSTRIES, LLC. v. THOR GLOBAL ENTERPRISES LTD. (Fed. Cir. 2012) (P) – Claim preclusion based on trademark action

by Steve Driskill | Nov 27, 2012 | [sub] offer for sale, Prior Art

While the issue of claim preclusion is not particularly relevant for patent preparation or prosecution, it is important to note the distinction the court makes here between mere “advertising” and a true “offer for sale” sufficient to give rise to liability for patent...

VOTER VERIFIED, INC. v. PREMIER ELECTION SOLUTIONS, INC. (Fed. Cir. 2012) (P) – Internet postings as “printed publications” & humans under § 112, ¶ 6

by Steve Driskill | Nov 5, 2012 | [sub] corresponding structure, [sub] printed publications, Means Plus Function, Prior Art

While a fact-specific analysis, an internet posting on a website probably qualifies as prior art if “an interested researcher [could have found it] using that website’s own search functions and applying reasonable diligence.” In the age of Google, this is probably not...