MEDICINES COMPANY v. HOSPIRA, INC. (Fed. Cir. 2016) (P, en banc) – Manufacturing services by a supplier does not trigger an on sale bar under 35 U.S.C. § 102(b)

by | Jul 11, 2016 | [sub] offer for sale, Prior Art

The mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention. Here, for example, no on sale bar was found to be triggered by the...

MERCK & CIE v. WATSON LABORATORIES INC. (Fed. Cir. 2016) (P) – It is not necessary that an actual sale be consummated to trigger the on-sale bar under 35 U.S.C. § 102(b)

by | May 13, 2016 | [sub] offer for sale, Prior Art

While an offer for sale must qualify as a commercial offer under the law of contracts to trigger the on-sale bar under 35 U.S.C. § 102(b), it is not necessary that an actual sale ever be consummated. Here, for example, a fax detailing price and delivery terms,...

BLUE CALYPSO, LLC. v. GROUPON, INC. (Fed. Cir. 2016) (P) – (1) Mere absence of a claim term from the specification alone does not establish a lack of written description; (2) A reference available only via a personal webpage does not automatically constitute a printed publication

by | Mar 1, 2016 | [sub] printed publications, [sub] written description, Adequate Disclosure, Prior Art

(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and...

APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2016) (P) – An information disclosure statement constitutes a tacit admission that those references are analogous art

by | Feb 26, 2016 | [sub] analogous art, [sub] information disclosure, Prior Art

Submitting a reference to the PTO in an information disclosure statement constitutes a tacit admission that the reference is at least analogous art if not material. Here, for example, the patentee’s arguments that a cited reference was not analogous art for the...

INDUSTRIAL TECHNOLOGY RESEARCH v. PACIFIC BIOSCIENCES (Fed. Cir. 2016) (NP) – Common ownership of a prior art reference cannot be established by later filed assignment documents alone

by | Jan 29, 2016 | [sub] common ownership, Prior Art

Common ownership of a prior art reference at the time of invention cannot be established for the purposes of disqualifying that reference under § 103(c) by later filed assignment documents alone. Here, for example, an assignment of a prior art reference that occurred...