IN RE HILL-ROM SERVICES, INC. (Fed. Cir. 2015) (NP) – A challenge to a Board decision as constituting a “new ground of rejection” must be raised in rehearing

by Steve Driskill | Dec 2, 2015 | [sub] appellate, PTO Procedure

The PTO’s rule requiring that any challenge to a Board decision as constituting a “new ground of rejection” must be raised in a request for rehearing to preserve it for review by the court system is not unreasonable and is in accordance with the principles of...

MCM PORTFOLIO LLC v. HEWLETT-PACKARD COMPANY (Fed. Cir. 2015) (P) – Inter partes review (IPR) does not violate Article III or the Seventh Amendment of the U.S. Constitution

by Steve Driskill | Dec 2, 2015 | [sub] inter partes review, PTO Procedure

The IPR system is a viable administrative procedure in so far as it does not violate Article III or the Seventh Amendment of the U.S. Constitution. Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is...

IN RE COMMONWEALTH SCIENTIFIC (Fed. Cir. 2015) (NP) – An applicant’s prosecution strategy does not bar claims that are otherwise permissible under § 135(b)(1)

by Steve Driskill | Nov 20, 2015 | [sub] interference, PTO Procedure

An applicant’s prosecution strategy does not bar claims provoking an interference that are otherwise permissible under § 135(b)(1). Here, for example, claims copied from another patent before the critical date in § 135(b)(1) but then canceled and only added-back five...

INPHI CORPORATION v. NETLIST, INC. (Fed. Cir. 2015) (P) – A negative limitation is supported by a description of alternative features without articulating advantages

by Steve Driskill | Nov 13, 2015 | [sub] written description, Adequate Disclosure

Negative claim limitations may be supported by the specification’s description of alternative features—even without articulating advantages or disadvantages of each feature—which can constitute a “reason to exclude” under the standard for supporting negative...

CUBIST PHARMACEUTICALS, INC. v. HOSPIRA, INC. (Fed. Cir. 2015) (P) – A certificate of correction may be used to correct a chemical structure based on later discoveries

by Steve Driskill | Nov 12, 2015 | PTO Procedure

A certificate of correction may be used to correct the chemical structure of a claimed compound based on later discoveries when the specification as a whole makes clear that the patentee nevertheless possessed the compound at the time of filing. Here, for example, the...