On January 20, in a 7-2 decision, the Supreme Court issued a decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. overturning the Federal Circuit’s practice of reviewing all aspects of claim construction de novo. In summary, the Supreme Court held that, while the ultimate claim construction is reviewed de novo, if there is an underlying subsidiary factual dispute about a claim term (e.g., if there is a dispute about extrinsic evidence presented during claim construction), the district court’s findings of fact must be reviewed under the more deferential standard of “clear error,” even if that finding of fact is the determining issue for how a claim is construed. This standard replaces the Federal Circuit’s previous practice of reviewing all aspects of claim construction de novo, regardless of any underlying factual determinations made by the district court, and could impact the approach taken in U.S District Court claim construction hearings.
Archives for January 2015
On January 27, the USPTO released examples of claims that it considers to be patent-eligible (four examples) and claims that it considers to be ineligible (four examples) under the abstract idea eligibility analysis set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. These examples are directed to computer-based inventions, explain the USPTO’s analysis in detail, and are intended to supplement the “2014 Interim Guidance on Patent Subject Matter Eligibility” released by the USPTO on December 16. Analogizing to one or more of the claims in the patent-eligible examples and/or distinguishing the claims in the patent-ineligible examples can be an effective strategy for traversing an Alice-based §101 rejection of a claim reciting a computer-implemented invention.
Oliff PLC will host its 7th Annual Intellectual Property Training Institute this fall. Our two-week Institute will be held from Sunday, September 27 through Friday, October 9, 2015.
For more information or to request a registration form, please do not hesitate to contact us. Because of our desire to limit the number of attendees, and thereby maximize the value of our 2015 Institute to them, registration will be accepted on a first-come, first-served basis.