Expenses Incurred by Government Attorneys during a 35 U.S.C. § 145 Appeal Can Be Recovered by the USPTO

NANTKWEST, INC. v. MATAL: June 23, 2017.  Before Prost, Dyk, and Stoll.   Takeaway: Expenses incurred by USPTO during a 35 U.S.C. § 145 appeal include a pro-rata share of the incurred attorneys’ fees. The American Rule denying attorneys’ fees to the prevailing party does not apply when applicable statute specifically and …

Even Groundbreaking Medical Discoveries May Not Be Patentable

THE CLEVELAND CLINIC FOUNDATION, CLEVELAND HEARTLAB, INC., v. TRUE HEALTH DIAGNOSTICS LLC: No. 2016-1766; June 16, 2017.  Before Lourie, Reyna, and Wallach. Takeaway: Patent claims directed to observing a law of nature are patent-ineligible subject matter even if based on a valuable discovery. Service providers cannot be liable for contributory infringement if …

The District Court Properly Exercised Subject Matter Jurisdiction and Granted Summary Judgment Notwithstanding the Plaintiff’s Execution of a Covenant not to Sue that Appeared to be Unconditional

ARCELORMITTAL V. AK STEEL CORP.:  May 16, 2017. Before Hughes (majority), Wallach (dissent), and Moore.   Takeaway: CAFC affirmed the district court’s ruling that it had the subject matter jurisdiction necessary to deny plaintiff’s motion to dismiss and grant summary judgment of invalidity. CAFC found that a facially unconditional covenant not …

Shoulder Replacement Apparatus Not Anticipated by Prior Art Requiring Modification to Satisfy Claim Language

IN RE: CHUDIK: March 27, 2017. Before Dyk, Reyna, and Stoll. Takeaway: A prior art reference that must be distorted from its obvious design does not anticipate claims. Procedural Posture: In an appeal from the USPTO where the PTAB affirmed the examiner’s rejection of Chudik’s claims as anticipated by two …

Federal Circuit Determines That the PTAB Erred in Sustaining an Examiner’s Rejection of a Claim for Being Anticipated by Prior Art

IN RE: STEVEN C. CHUDIK, 2016-1487 (Fed. Cir. January 9, 2017) (non-precedential). On appeal from PTAB.  Before Prost, Clevenger, and Reyna. Procedural Posture: A patent claim was rejected as anticipated by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) . Finding that the applicant failed to rebut the examiner’s …