Quick answer: no!

The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support.  The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds.  While this is not a common occurrence, in this case, it’s an easy conclusion to reach.

In In re Huping Hu, 2021 U.S. App. LEXIS 7776, the inventors applied for patents for inventions related to “quantum entanglement.”  According to the inventors, quantum entanglement is “quantum spins of photons, electrons and nuclei.”  The inventors explained that “quantum spins of photons, electrons and nuclei have now been successfully entangled in various ways for purposes of quantum computation and communication.”  The inventors said that quantum entanglement is a phenomenon that happens if particles, such as photons and electrons, become linked, and, when separated, the mechanical states of the molecules are still linked such that if the state of one particle is changed, the linked particle is affected.  The PTO explained the inventors’ method as using quantum entanglement “to change the characteristics of one substance via the manipulation of a completely physically separate substance.”  The PTO did not dispute the existence of quantum entanglement, but said that the phenomenon has been seen in very specific conditions for only a fraction of a second.
Continue Reading Can a Patent Violate the Laws of Chemistry and Physics?

In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining plaintiff’s litigation positions were not baseless even after a granting of summary judgment of noninfringement that “was not a close call.”  

As way

Pfizer and BioNTech recently asked the Southern District of California to dismiss a patent infringement claim from Allele Biotechnology related to Pfizer and BioNTech’s Covid-19 vaccine.

Allele holds a patent for a fluorescent protein called mNeonGreen, which causes some cells to glow when exposed to certain kinds of light.  Allele does not claim that mNeonGreen

The validity of a United States patent can be challenged in federal court litigation.  Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.

The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination.  In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB).  In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.

In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent.  The filing fees are high, $41,500 for an IPR and $47,500 for a PGR, with additional fees depending on the number of claims challenged.  The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent.  There are two phases in these proceedings.  The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB.  If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins.  The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel.  The entire process from institution to the final decision should take no more than 12 months.  The parties may appeal the decision to the Federal Circuit Court of Appeals.
Continue Reading How to Challenge a Patent in the PTO