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 …

Web Page Authentication Patent is Outside the Scope of CBM Review

SECURE AXCESS v. PNC BANK: Feb. 21, 2017. Before Lourie (dissenting), Plager, and Taranto. Takeaway: To qualify for CBM review, a patent must claim “the practice, administration, or management of a financial product or service.” Claims that are only “incidental to a financial activity” do not qualify. Procedural Posture: Secure …

The Federal Circuit Finds Drug Does Not Satisfy Markush Group Requirements; Reverses District Court Finding of Infringement

SHIRE DEV., LLC v. WATSON PHARM., INC.: Feb. 10, 2017.  Before Prost, Taranto, and Hughes. Takeaways: An ANDA product that does not satisfy the Markush group requirements of the claim does not infringe. The phrases “consisting of” and “consists of” in a Markush claim will create a “very strong presumption” …

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 Cir. January 9, 2017) (non-precedential).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 …

The Term “Visually Negligible” Found Not Indefinite Where the Written Description Provided a Skilled Artisan With an Understanding, with Reasonable Certainty, of What it Means

SONIX TECH. CO. v. PUBLICATIONS INT’L, LTD.: Jan. 5, 2017. Before Lourie, O’Malley, and Taranto. Takeaway: Claims involving terms of degree are not inherently indefinite, and have been found definite where they provide enough certainty to one of skill in the art when read in the context of the invention. …