Category Archives: What’s Trending

The Federal Circuit IP Blog Embarks on “The Terrible Twos” and Finds Patent Law Posts More Popular than Procedural Ones

Author: Tyler B. Latcham*
Editor: Elizabeth D. Ferrill

1. Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test – Section 101 remains a hot topic, specifically as the Federal Circuit finds more claims directed toward computer technology patent-eligible subject matter. This blog summarized BASCOM Global v. AT&T, where the Federal Circuit found claims relating to “filtering Internet content” patent-eligible.

2. Graphical Indicator Patent Gets “Definite” Win Under § 112 ­– This post may have gained interest because the Federal Circuit reversed the district court decision finding a claim indefinite as purely subjective. The case clarifies the indefiniteness test as to allegedly subjective claim language.

3. FDA Request for Justification Found to Provide a Mere Research Suggestion¾Not Conception of Claimed Formulation – In February of this year, this blog covered a Federal Circuit opinion dealing with a generic pharmaceutical company’s unusual argument that the named inventor derived the invention from someone at the FDA based on communications between the inventor and the FDA.

4. Four Network Service Provider Patents Found Patent-Eligible Under § 101 – Continuing the trend of interest in § 101 challenges to computer-based claims, this blog post discussed the tricky “inventive concept” in the Alice Test.

5. Federal Circuit Clarifies Nexus Requirement of Objective Indicia of Nonobviousness – This post was by far the most popular blog post over the last year with close to 500 pageviews. Its popularity may be two-fold. First, the Federal Circuit clarified the nexus requirement in § 103 and found the Board erred when it gave objective indicia of nonobviousness no weight. Second, most patent blogs did not discuss this case at all.

Up-and-Comer:  TC Heartland: Supreme Court Makes Venue Shopping More Difficult for Patent Trolls – This blog post is on track to be the most popular blog we have published. With almost 300 views in less than two weeks after publication, it is already the 7th most popular blog post of the year. The blog covers the highly anticipated and discussed TC Heartland case dealing with venue and the meaning of 28 U.S.C. § 1400(b).


*Tyler B. Latcham is a Summer Associate at Finnegan.


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Potential Implications of Supreme Court’s Patent Exhaustion Decision Leaves Uncertainty for Patent Owners

Author: Kevin D. Rodkey
Editor: D. Brian Kacedon

In Impression Products v. Lexmark International, No. 15-1189 (S. Ct. May 30, 2017), the Supreme Court reversed the Federal Circuit’s en banc decision that patent owners may enforce post-sale restrictions that are clearly communicated to purchasers of patented products and that international sales do not exhaust U.S. patent rights. In doing so, the Supreme Court held that any authorized sale by a patent owner exhausts all patent rights in the product sold, which prohibits a patent owner from enforcing post-sale restrictions through patent infringement suits. The Court also held that exhaustion applies to both domestic and foreign sales authorized by the patent owner. Continue reading

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Spotlight on Upcoming Oral Arguments – June 2017

Spotlight on Upcoming Oral Arguments – February 2017

Authors: Kate Leonard*
Editor: Caitlin O’Connell & Lily Robinson

Monday, June 5, 2017

In Re NFC Technology, No. 16-1808, Courtroom 201

In this appeal from the PTAB, the Federal Circuit will address whether the Board exceeded its authority in an inter partes review by sua sponte raising a conception/lack of inurement defense on behalf of Petitioner HTC.  Patent owner NFCT argues that the Board’s actions deprived NFCT of the opportunity to respond to the inurement defense prior to the Board issuing its final written decision.  The PTO argues that NFCT raised the issue of conception and that the Board’s analysis of the issue was not restricted to the rebuttal arguments raised by HTC in its Reply.
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