Tag Archives: Invalidity

Court Lacks Subject Matter Jurisdiction over Unasserted Claims

A party can raise lack of subject-matter jurisdiction at any time during a litigation. Illustrating this point, recently in Joao Control & Monitoring Systems, LLC v. Telular Corporation a patentee saved its unasserted patent claims from the Court’s invalidity order by arguing that the Court lacked subject matter jurisdiction over the unasserted claims. In 2014, … Continue Reading

Oversimplifying Patent Claims Dooms Government’s Case in Federal Circuit Decision

motionDefendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice[1] test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an … Continue Reading

Zircore v. Straumann: A Method of Manufacturing a Physical Object Is Not an Abstract Idea

In Zircore, LLC v. Straumann Manufacturing, Inc. (E.D. Tex. 2017), as in many patent litigations since Mayo, Myriad, and Alice, the defendant moved to dismiss the infringement allegations contending that the patents in suit are ineligible subject matter under 35 USC § 101. Here, despite Straumann’s assertion that Zircore’s U.S. Patent No. 7,967,606 was invalid … Continue Reading

U.S. Patent Office Updates Subject Matter Eligibility Guidance, Including Life Science Examples

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 … Continue Reading

The Federal Circuit Declines to Rehear En Banc Cell-Free Fetal DNA Appeal

Last week the Federal Circuit denied Sequenom’s petition for rehearing en banc to review patent eligibility of their cell-free fetal DNA patent, U.S. Pat. No 6,258,540 (the ’540 Patent).  The District Court found the ’540 Patent invalid under 35 U.S.C. § 101 for being directed to ineligible subject matter under the U.S. Supreme Court precedent … Continue Reading

Method Claims of a Medical Device-Based Patent Found Invalid under Section 101 in Further Erosion of Patent Rights

On August 28 and September 15, 2015, certain asserted claims of Exergen’s United States Patent No. 7,787,938 (the “‘938 patent”) were found invalid under 35 U.S.C. § 101 on two separate summary judgment motions. See Exergen Corp. v. Brooklands Inc. (“Brooklands”), No. 12-cv-12243-DPW (August 28, 2015) and Exergen Corp. v. Thermomedics, Inc. (“Thermomedics”), No. 13-cv-11243-DJC (September … Continue Reading

Latest in the § 101 Saga: Sequenom Requests En Banc Rehearing, Indicating Biomedical Research Will Be Stymied Otherwise

DNA HelixArguing that its invalidated diagnostic patent claims were “collateral damage in what is properly a war on frivolously broad claims directed to things like correlation tables and actual strands of human DNA,” on August 13, 2015, Sequenom petitioned the Federal Circuit for an en banc review of its June 12 holding in Ariosa Diagnostics, Inc. … Continue Reading
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