Despite previously affirming the ITC's decision that a dental tradeshow catalog was not publicly accessible, the Federal Circuit recently upheld the PTAB's opposite conclusion. The Federal Circuit explained that it was not bound by its prior affirmance of the ITC's judgment because it was based on a different factual record with a different burden of proof, i.e., preponderance of the evidence at the PTAB versus clear and convincing evidence at the ITC.Read More
While the recent holding in Univ. of California v. Broad Institute, Inc., will certainly have long-reaching and important implications in the fight for control over CRISPR-based technology, the Federal Circuit’s opinion also provides additional confirmation that an obviousness determination must demonstrate a “reasonable expectation of success” when combining references from the prior art.
Author: Jeffrey K. Mills, Ph.D.
A catalog distributed at a members-only trade show is a printed publication under 35 USC § 102(b). The Federal Circuit vacated and remanded a Board decision finding that an IPR challenger's catalog distributed at a trade show was not sufficiently available to the general public to qualify as a printed publication. The Federal Circuit found that the Board failed to cite any cases where the Federal Circuit has "strictly held that the expertise of the target audience is dispositive of the inquiry of accessibility."Read More
One June 7, 2018, the USPTO issued a Memorandum to the Examining Corps emphasizing that method of treatment claims can satisfy 35 U.S.C. §101 under the first step of the two-part Alice/Mayo analysis without requiring a showing of nonroutine or unconventional steps.
Author: Melissa J. Pytel