Janssen Pharmaceuticals, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., Nos. 2022-1258, 2022- 1307 (April 1, 2024) (precedential) (3-0); Patent No. US 9,439,906

Key point:

• An obviousness inquiry must focus on the claimed invention, not unstated goals or standards an inventor considered during development

Alexsam, Inc., v. Cigna Corporation, No. 2022-1599 (April 1, 2024) (non-precedential); Patent No. 6,000,608

Key point:

• When a court has prescribed specific claim construction procedures and the parties have proceeded toward trial in reliance on such procedures, the court has discretion to preclude parties from injecting new claim construction theories.

Alexsam, Inc., v. Simon Property Group, L.P., No. 2022-1598 (April 1, 2024) (non-precedential); Patent No. 6,000,608

Key point:

• When a court has prescribed specific claim construction procedures and the parties have proceeded toward trial in reliance on such procedures, the court has discretion to preclude parties from injecting new claim construction theories.

Bhagat. v. USPTO, No. 2023-1545, (April 3, 2024) (nonprecedential); U.S. Patent Application No. 13/877,847

Key point(s):

• In cases where an applicant seeks to patent a composition that occurs naturally in a plant, expressly disclaiming that the composition comes from “any single specific variety” of plant will not be enough by itself to overcome a § 101 rejection.
• A conclusory assertion that claims are not well understood based on the lack of a § 102 rejection is not enough by itself to overcome a § 101 rejection under Alice step 2.

D3D Technologies, Inc., v. Microsoft Corporation, No. 2023-1462 (April 3, 2024) (non-precedential); Patent No. 9,980,691

Key point:

• In an inter partes review (IPR) proceeding, a final written decision (FWD) concluding a claim limitation is taught by a single reference, when the party that instituted the IPR argued the claim limitation was taught by a combination of references may not violate the administrative procedure act (APA).

AI Visualize, Inc. v. Nuance Communications, Inc., No. 2022-2109 (April 4, 2024) (precedential) (3-0); Patent Nos. 8,701,167, 9,106,609, 9,438,667, and 10,930,397

Key point:

• For software applications, claims must recite a technical solution to a technical problem with specificity in order to be considered patent-eligible under 35 U.S.C. § 101.

Sumitomo Pharma Co., LTD., v. USPTO, No. 2022-2276, (April 5, 2024) (nonprecedential); U.S. Patent No. 9,815,827

Key point:

• An appeal of a final written decision in an inter partes review proceeding of a patent must be dismissed if: (1) the patent expires during the pendency of the appeal; and (2) the appellant is not seeking any pre-expiration damages from direct infringement of the patent.