IP Insights

PTAB Reverses Obviousness Rejections for Failure to Adequately Explain the Motivation to Combine References and that the Claimed Product Would Result from the Combination 

By Pat Halloran | November 23, 2022

The Applicant appealed the Examiner’s rejection of its claims to “[a]n aqueous dispersion comprising….a continuous phase” of “75% to 100% water” and “60% to 95% of a distributed phase” including “2% to 20% ethylcellulose polymer”, “70 to 97% food oil” and “1% to 10% dispersant, wherein the distributed phase comprises dispersed particles that are solid […]

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Supreme Court to Consider Patent Written Description Enablement

By Natalie Grace | November 16, 2022

Patent practitioners are intimately familiar with the requirement of 35 U.S.C. § 112 that the “written description of the invention, and of the manner and process of making and using it, [shall be presented] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, […]

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Federal Circuit Decision Provides a Reminder on the Potential Effects of Incorporation by Reference

By James Harris | November 9, 2022

The Federal Circuit recently reversed a summary judgment ruling that a patentee’s claims were indefinite based on a definition found in another patent that was incorporated by reference.   In Finjan LLC v. Eset, LLC, the claim term at issue was the term “downloadable.”  Finjan’s earliest priority application (the ‘639 application) included a common definition […]

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Federal Circuit Panel Splits in Evaluating Patent Eligibility of IBM’s Map Display and Layered Data Patents

By Michael Dorfman | November 1, 2022

In an October 17, 2022 precedential opinion in IBM v. Zillow Group (available here), the Federal Circuit affirmed the grant of a motion for judgment on the pleadings concluding that two of the asserted patents claimed ineligible subject matter under 35 U.S.C. § 101.  Judge Stoll dissented-in-part with regard to two dependent claims for which […]

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