scholarly journals What is the "Invention"?

2018 ◽  
Author(s):  
Christopher A Cotropia
Keyword(s):  
Supreme Court ◽  
Patent Law ◽  
Single Sentence ◽  
Natural Reaction ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Written Description

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in which courts define the invention by the detailed technology discussion in the patent specification's descriptions and drawings. Other decisions invoke a "claim-centered invention" definition, which relies almost exclusively on the claim, a single sentence at the end of the patent. Judging these two definitions against common patent theories can help to determine which best fits the theories'narratives.T his Article concludes that the external invention is more favorable because it grounds exclusivity in what the inventor has actually done or plans to do and, accordingly, is more likely to comport with common patent theories.

Idenix v. Gilead: The enablement and written description limits of a genus claim

2021 ◽  
Vol 17 (2) ◽  
pp. 77-83
Author(s):  
Keith A Zullow ◽  
Cindy Chang ◽  
Sean Anderson
Keyword(s):  
Case Report ◽  
Hepatitis C Virus ◽  
Hepatitis C ◽  
Supreme Court ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Written Description ◽  
Insufficient Number

In Idenix Pharms. LLC v. Gilead Sci. Inc., 941 F.3d 1149 (Fed. Cir. 2019), the Federal Circuit affirmed a judgment of invalidity of a patent claiming methods for treating Hepatitis C virus for, inter alia, lack of enablement. The Supreme Court denied Idenix’s petition for a writ of certiorari, meaning that the Federal Circuit decision stands, and genus claims covering thousands of compounds that were supported by an insufficient number of examples have failed the enablement test not once, but twice. See Wyeth & Cordis Corp. v. Abbott Labs., 720 F.3d 1380 (Fed. Cir. 2013). This case report presents the context surrounding the Federal Circuit’s Idenix decision and the Supreme Court’s decision not to hear the case.

scholarly journals Life After Bilski

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Supreme Court ◽  
Real World ◽  
Subject Matter ◽  
Case Law ◽  
Patent Law ◽  
District Courts ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Abstract Ideas ◽  
New Applications

In Bilski v. Kappos, the Supreme Court declined calls to categoricallyexclude business methods - or any technology - from the patent law. It alsorejected as the sole test of subject matter eligibility the FederalCircuit’s deeply-flawed "machine or transformation" test, under which noprocess is patentable unless it is tied to a particular machine ortransforms an article to another state or thing. Subsequent developmentsthreaten to undo that holding, however. Relying on the Court’s descriptionof the Federal Circuit test as a "useful and important clue', the U.S.Patent and Trademark Office, patent litigants, and district courts have allcontinued to rely on the machine-or-transformation test in the wake ofBilski: no longer as the sole rule, but as a presumptive starting pointthat threatens to effectively become mandatory. In this Article, we suggesta new way to understand the exclusion of abstract ideas from patentablesubject matter. No class of invention is inherently too abstract forpatenting. Rather, the rule against patenting abstract ideas is an effortto prevent inventors from claiming their ideas too broadly. By requiringthat patent claims be limited to a specific set of practical applicationsof an idea, the abstract ideas doctrine both makes the scope of theresulting patent clearer and leaves room for subsequent inventors toimprove upon - and patent new applications of - the same basic principle.Recasting the abstract ideas doctrine as an overclaiming test eliminatesthe constraints of the artificial machine-or-transformation test, as wellas the pointless effort to fit inventions into permissible or impermissiblecategories. It also helps understand some otherwise-inexplicabledistinctions in the case law. Testing for overclaiming allows courts tofocus on what really matters: whether the scope of the patentee's claimsare commensurate with the invention’s practical, real-world contribution.This inquiry, we suggest, is the touchstone of the abstract ideas analysis,and the way out of the post-Bilski confusion.

Sperry Corp. v. United States

1989 ◽  
Vol 83 (1) ◽  
pp. 86-90
Author(s):  
Rose Cecile Chan
Keyword(s):  
United States ◽  
Supreme Court ◽  
World Trade ◽  
The United States ◽  
United States Constitution ◽  
Preliminary Ruling ◽  
Fifth Amendment ◽  
Court Of Appeals ◽  
The Supreme Court ◽  
Federal Circuit

Plaintiffs, Sperry Corp. and Sperry World Trade Inc. (Sperry), received an award from the Iran-United States Claims Tribunal (Tribunal). Upon payment of the award, the United States deducted 2 percent of the total amount pursuant to a directive license issued by the Secretary of the Treasury regarding recovered claims by U.S. nationals against Iran. When plaintiffs challenged the authority of the Treasury to make the deduction and the United States Claims Court announced a preliminary ruling that concurred with plaintiffs’ position, the Executive persuaded Congress to approve legislation authorizing specified percentages to be deducted by the United States from Tribunal awards to U.S. citizens. Responding to the plaintiffs’ challenge to the constitutionality of the newly enacted statute, the United States Claims Court dismissed the suit and, on appeal, the United States Court of Appeals for the Federal Circuit (per Meyer, J.) reversed and held: that the deduction constitutes a taking without compensation in violation of the Fifth Amendment to the United States Constitution. In September 1988, the United States filed notice of appeal with the Supreme Court.

scholarly journals Is Patent Law Technology-Specific?

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
New Technologies ◽  
Computer Software ◽  
Patent Law ◽  
The Other ◽  
Legal Rules ◽  
Legal Standards ◽  
Structural Problems ◽  
Prior Art ◽  
Federal Circuit ◽  
Written Description

Patent law has a general set of legal rules to govern the validity andinfringement of patents in a wide variety of technologies. With a very fewexceptions, the statute does not distinguish between different technologiesin setting and applying legal standards. In theory, then, we have a unifiedpatent system that provides technology-neutral protection to all kinds oftechnologies.Of late, however, we have noticed an increasing divergence between therules themselves and the application of the rules to different industries.The best examples are biotechnology and computer software. In biotechnologycases, the Federal Circuit has bent over backwards to find biotechnologicalinventions nonobvious, even if the prior art demonstrates a clear plan forproducing the invention. On the other hand, the court has imposed stringentenablement and written description requirements on biotechnology patentsthat do not show up in other disciplines. In computer software cases, thesituation is reversed. The Federal Circuit has essentially excused softwareinventions from compliance with the enablement and best mode requirements,but has done so in a way that raises serious questions about howstringently it will read the nonobviousness requirements. As a practicalmatter, it appears that while patent law is technology-neutral in theory,it is technology-specific in application.The paper explains how the application of the same general legal standardscan lead to such different results in diverse industries. Much of thevariance in patent standards is attributable to the use of a legalconstruct, the "person having ordinary skill in the art" (PHOSITA), todetermine obviousness and enablement. The more skill those in the art have,the less information an applicant has to disclose in order to meet theenablement requirement - but the harder it is to meet the nonobviousnessrequirement. The level of skill in the art affects not just patentvalidity, but also patent scope.We do not challenge the idea that the standards in each industry shouldvary with the level of skill in that industry. We think the use of thePHOSITA provides needed flexibility for patent law, permitting it to adaptto new technologies without losing its essential character. We fear,however, that the Federal Circuit has not applied that standard properly ineither the biotechnology or computer software fields. The court has aperception of both fields that was set in earlier cases but which does notreflect the modern realities of either industry. The changes in an industryover time present significant structural problems for patent law, bothbecause law is necessarily backward-looking and precedent-bound and becauseapplying different standards to similar inventions raises concerns abouthorizontal equity. Nonetheless, we believe the courts must take more carethan they currently do to ensure that their assessments of patent validityare rooted in understandings of the technology that were accurate at thetime the invention was made.

scholarly journals Inventing Around Copyright

2016 ◽  
Author(s):  
Dan Burk
Keyword(s):  
Supreme Court ◽  
Technological Development ◽  
Patent Law ◽  
Court Decisions ◽  
Patent Holder ◽  
The Supreme Court

Patent law has long harbored the concept of "inventing around," under which competitors to a patent holder may be expected, and even encouraged, to design their technologies so as to skirt the boundaries defined by patent claims. It has become increasingly clear that, for better or for worse, copyright also fosters inventing around. Copyright is not based on written claims, but because copyright links exclusive rights to technological actions such as reproduction, distribution, or transmission, the language of the copyright statute, and judicial readings of the statute, create boundaries around which potential infringers may technologically navigate. For example, the Aereo case recently decided by the Supreme Court involves technology that was explicitly designed to conform to non-infringing definitions of private transmission found in previous court decisions. But in copyright, unlike patent, there has been little analysis of the tendency to foster alternative technological development. In this paper I draw upon previous analyses of inventing around in patent law to assess the benefits and detriments of inventing around in copyright.

Impression Products, Inc. v. Lexmark International, Inc.: Is US Supreme Court's Ruling A Pointer To Indian Patent Law On Parallel Imports?

2018 ◽  
Vol 23 (4) ◽  
Author(s):  
Dinesh Kumar Sharma
Keyword(s):  
United States ◽  
Supreme Court ◽  
The United States ◽  
Patent Law ◽  
Parallel Imports ◽  
The Supreme Court

This article attempts to look at the recent significant 7-1 ruling dated May 30, 2017 handed down by the Supreme Court of the United States in Impression Products, Inc.  v. Lexmark International, Inc. 581 US _(2017) to see if it can help shed some light on the true scope and import of the Indian patent law on the so-called "parallel imports" i.e. Section 107A(b) of the Patents Act, 1970 (as amended), and in particular to see if it embodies the so-called doctrine of "international exhaustion" and if yes, does it cover within its sweep a possibility of "conditional sale" so as not to erode the principle of "exhaustion"?

Biosimilars and federal preemption in the USA

2018 ◽  
Vol 15 (3) ◽  
pp. 138-144
Author(s):  
Jeffrey R Bousquet
Keyword(s):  
Supreme Court ◽  
Information Exchange ◽  
Price Competition ◽  
Exchange Process ◽  
State Law ◽  
License Application ◽  
The Supreme Court ◽  
Manufacturing Information ◽  
The Usa ◽  
Federal Circuit

Summary This article reports on the recent decision by the Court of Appeals for the Federal Circuit (“Federal Circuit”) in Amgen v. Sandoz on remand from the U.S. Supreme Court. The Supreme Court held that a biosimilar applicant cannot be compelled under federal law to provide a copy of its abbreviated biologics license application (“aBLA”) and manufacturing information to the reference product sponsor (“RPS”) as required by the Biologics Price Competition and Innovation Act (“BPCIA”). The Supreme Court remanded the case to the Federal Circuit to determine whether there was any remedy under California state law available to Amgen, and if so, whether such remedy is preempted by the BPCIA. The Federal Circuit held that the BPCIA preempts state law remedies for a biosimilar applicant’s failure to comply with the BPCIA. This article also briefly discusses three other recent cases involving situations where the biosimilar applicant initiates the BPCIA information exchange process but provides only partial or no manufacturing information to the RPS or fails to complete the process by opting out at some later stage of the process.

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