The appeal to the Federal Circuit would be an option if a motion to stay pending the CBM review is denied

Sung-Hoon Kim | December 18, 2014

Versata Software, Inc. v. Callidus Software, Inc.

November 20, 2014

Panel: Chen, Mayer, and Linn. Opinion by Chen.


Callidus appealed from the U.S. District Court for the District of Delaware’s denial of a stay pending the PTO’s CBM review of the patents-in-suit.  The Federal Circuit used a four factor test set forth in AIA §18(b) to hold that each factor strongly favors a stay, thereby reversing and remanding with instructions to grant the motion to stay.

본 사건은 피고인 Callidus가 델라웨어주 연방지방법원의 특허재심사 절차 진행 중인 특허 소송에 대한 중지청구(motion to stay) 판결에 불복하여 연방항소법원에 상고한 사건이다.  판결에서 연방항소법원은 18(b)조에 있는 4가지 요소 모두 현 소송 진행상황상 미 특허청의 특허재심사 절차 (CBM) 결과를 기다리는 것이 타당하다고 판결하였다.  따라서, 연방항소법원은 개정 특허법 18(b)조에 의거하여 연방지방법원의 중지청구 판결을 번복하였다.

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Claimed inventions of a reissue patent must be clearly and unequivocally disclosed in the original specification

Kumiko Ide | December 17, 2014

Antares Pharma, Inc. v. Medac Pharma Inc., et al.

November 17, 2014

Panel: Dyk, Reyna, and Taranto.  Opinion by Dyk.


The Federal Circuit found the asserted reissue claims invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251.  Under § 251, the original patent specification must adequately disclose the later-claimed features.  Here, the Federal Circuit found that the original specification failed to clearly and unequivocally disclose the inventions of the asserted claims of the reissue patent.


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Upon Further Review, the Ruling on the Field Stands – Federal Circuit Sustains PTO’s Refusal to Withdraw Terminal Disclaimer

Darrin Auito | December 10, 2014

Japanese Foundation for Cancer Research v. Lee

December 9, 2014 (Federal Circuit)

Panel:  Prost, Dyk, Taranto. Opinion by Prost


In Japanese Foundation for Cancer Research v. Lee (2014), the Federal Circuit reversed the district court’s determination on summary judgment that the United States Patent & Trademark Office (“PTO”) acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw a terminal disclaimer on U.S. Pat. No. 6,194,187 (“’187 patent”).  The Federal Circuit held that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use any inherent authority that it may have in withdrawing the terminal disclaimer on the ’187 patent that the Japanese Foundation for Cancer Research’s (“Foundation”) attorney of record filed in accordance with the PTO’s regulations.

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Surviving Alice Gone Wild

John Kong | November 26, 2014

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3]  The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions.  The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it.  Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”

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