Appeal of Discovery Order in BPCIA Patent Infringement Case Dismissed for Lack of Jurisdiction and Writ of Mandamus for Compelling Discovery Denied

AMGEN v. HOSPIRA:  August 10, 2017.  Before Dyk, Bryson and Chen.   Takeaway: The lack of immediate appeal over orders denying discovery of paragraph (l)(2)(A) information under BPCIA does not render such orders “effectively unreviewable” on appeal from a final judgment to qualify for interlocutory review. The reasonableness requirement of paragraph …

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 …

Enablement from a Provisional Application Must Be Supported by the Disclosure and Not Require Undue Experimentation by a Person Having Ordinary Skill in the Art

STORER v. CLARK: June 21, 2017.  Before Prost, Newman, and Dyk.   Takeaway: In order for a non-provisional patent application to be enabled by the provisional patent application from which it takes priority, the disclosure in the provisional patent application must enable one having ordinary skill to produce the claimed …

The Board’s Decision Finding Waterproof Leather Claims Unpatentable as Obvious Affirmed by the CAFC, a Person of Ordinary Skill Need Not Have the Same Motivation as the Patent’s Inventor

OUTDRY TECHNOLOGIES CORPORATION, v. GEOX S.P.A.: No. 2016-1769; June 16, 2017.  Before Dyk, Moore, and Rena. Takeaway: The motivation to combine inquiry is not limited to the problem faced by the inventor of a patent. Procedural Posture: Outdry appealed from the Board’s decision in an IPR finding that claims 1-15 of its …

Federal Circuit Dismisses Appeal upon Finding it is Precluded from Reviewing District Court’s Decision to Remand for Lack of Subject Matter Jurisdiction

PRESTON V. NAGEL: Jun. 1, 2017. Before Dyk, Taranto, and Hughes. Takeaways: The CAFC is barred under 28 U.S.C. § 1447(d) from reviewing the district court’s decision to remand because the remand was based on a lack of subject matter jurisdiction. The CAFC found that while hearing state-law and patent-law …