February 2016

Cuozzo and Dome Patent: Unpacking Claim Construction Standards and Burdens of Proof in Patentability and Validity Analyses
On January 15, 2016, the U.S. Supreme Court granted certiorari in the patent case Cuozzo Speed Technologies, LLC v. Lee, an appeal of the Federal Circuit decision
In re Cuozzo Speed Technologies, LLC. In the Cuozzo decision, the Federal Circuit decided the first appeal of a Patent Trial and Appeal Board (PTAB) ruling. Among the holdings of this case was the determination that the PTAB did not err in construing Cuozzo’s claims using the “broadest reasonable interpretation” (BRI) standard. The Supreme Court’s grant of certiorari raises the question of whether the Court might disagree with the Federal Circuit and hold that the “plain and ordinary meaning” (POM) standard used by district courts in construing patent claims is the standard that should be applied by the PTAB in post-grant challenges under the America Invents Act (AIA).  More

Species Claims Found Invalid Under
§ 103(a)
In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc., Nos. 2014-1634, -1635 (Fed. Cir. Nov. 10, 2015), the Federal Circuit affirmed the district court’s finding of invalidity for obviousness. It did not, however, address the district court’s judgment of invalidity on the ground of obviousness-type double patenting.  More

IP5 Offices
Inventor Oath or Declaration and Assignments
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Design Patents
Federal Circuit Ruling on Scope of USITC Jurisdiction over Digital Files Could Affect IP Enforcement in the Age of 3D Printing
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Rule Review
USPTO Simplifies Rules for Sharing Documents with Foreign Offices
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EPO Practice
Revised Procedures for Accelerating Prosecution at the EPO
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At the Federal Circuit
Determining Whether Printed Matter Is Given Patentable Weight
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If you have any questions or need additional information, please contact:

Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor