Patent Law

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By:Audrey Millemann

The Federal Circuit Court of Appeals has reaffirmed that patent applications must satisfy a written description requirement separate from the enablement requirement. In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), an en banc Court of Appeals held that 35 U.S.C. §112, first paragraph, contains a written description requirement separate and in addition to the enablement requirement. 

The plaintiff, Ariad Pharmaceuticals, sued Eli Lilly for infringement of a patent pertaining to methods for using a transcription factor to modify gene expression. At trial, the jury found that Eli Lilly had infringed the patent and that the claims of the patent were valid. The district court denied Eli Lilly’s motion for judgment as a matter of law. Continue Reading There is a Separate Written Description Requirement

by Matt Massari

Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction.  This may require the sender to appear in a distant court, at their own expense.  Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. Continue Reading Patent Minefield Now a Risk for Trademark Owners

By Audrey A. Millemann

The “first sale” or “patent exhaustion” doctrine provides that the first unrestricted sale by a patent owner of a patented product exhausts the patent owner’s control over that particular item. The doctrine is also analyzed as an implied license to the purchaser of a particular product of the rights to use and resell the product. Stated another way, the initial authorized sale of a patented item terminates the patent owner’s rights with respect to that item. Continue Reading Patent Exhaustion Clarified

by Audrey Millemann

Several weeks ago, on November 9, 2009, the United States Supreme Court heard oral argument in a key patent case. The case is Bilski v. Kappos (the USPTO). The issue before the Court was whether the Court should reverse the Federal Circuit’s “machine-or-transformation” test for the patentability of process inventions. The Supreme Court’s decision will determine the extent to which processes (or methods), particularly business methods, are patentable.Continue Reading Supreme Court Hears Oral Argument in Key Patent Case

By Audrey Millemann

One of the requirements for obtaining a patent is enablement. As set forth in 35 U.S.C. §112, ¶1, the specification of the patent must teach a person skilled in the art how to make and use the invention without undue experimentation. The enablement requirement must be satisfied at the time the patent application is filed for each claim. If a claim in a patent is not enabled, it is invalid.Continue Reading Patent Enablement Requires More Than a Guess