Category Archives: What’s Trending

Spotlight on Upcoming Oral Arguments – August 2017

Spotlight on Upcoming Oral Arguments – February 2017

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

Tuesday, August 8, 2017

EmeraChem Holdings v. Volkswagen Group of America, No. 16-2619, Courtroom 201

In this appeal from the PTAB, the Court will decide whether the Board erred in adopting a claim construction in its Final Written Decision that differed from the claim construction explicitly adopted in its Institution Decision. EmeraChem argues that the Board’s “change of theory midstream” deprived it of notice and an opportunity to address the new claim construction. Volkswagen argues that there is no fixed deadline by which a claim term must be finally construed. Volkswagen further argues that the Institution Decision signaled that the Board’s construction could potentially change since EmeraChem did address Volkswagen’s claim construction in its Preliminary Response.
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Spotlight on Upcoming Oral Arguments – July 2017

Spotlight on Upcoming Oral Arguments – February 2017

Authors: Courtney Kasuboski*
Editor: Caitlin O’Connell & Lily Robinson

Monday, July 10, 2017

Nalco Company v. Chem-Mod, LLC, No. 17-1036, Courtroom 201

This appeal arises from a Northern District of Illinois decision dismissing Nalco’s infringement complaint with prejudice and denying its motion for reconsideration. Nalco argues that the law does not require pleading all underlying evidence, but rather only requires evidence sufficient to establish entitlement to relief and notice of its claim. Chem-Mod argues that the district court properly dismissed Nalco’s complaint with prejudice after Nalco repeatedly failed to plead sufficient facts to establish a plausible claim and properly rejected Nalco’s attempt to bolster its complaint with materials put before the court in its motion for reconsideration.
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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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